September 26, 2019

Brazil accedes to the Madrid Protocol and Chile joins DesignView

On July 2, 2019, Brazil deposited their accession document to the Madrid Protocol, which will officially enter into effect as of October 2, 2019, after several years of discussion. The move comes after work by the intellectual property office of Brazil (INPI) to reduce the backlog of trademark applications.

The Federal Senate of Brazil approved the accession to the Madrid Protocol on May 22, 2019, making Brazil the 105th contracting party worldwide, and the third Latin American member-country alongside Mexico and Colombia. 

Upon membership, applicants for international trademark registration in Brazil will benefit from being able to file a single application with one set of fees. This single filing will cover 105 contracting parties to the Madrid Protocol. 

With Brazil as the office of origin, applicants may then opt into the international application and select specific contracting states to additionally file in. The application will then be processed via WIPO and then later by the designated countries. Alternatively, this can be selected at a later date, allowing applicants to maintain flexibility regarding widening the scope of protection for their trademarks. 

The time limit to notify a refusal of protection in Brazil, as per the protocol, is set to be 18 months. In addition, Brazil has stated that an individual fee is payable to Brazil for territorial extension of international registrations, as opposed to receiving a share of the complementary fee. Furthermore, any international registrations for trademarks granted prior to Brazil’s entry to the Madrid Protocol will not be extended to Brazil.  

The accession to the Madrid Protocol is a decision which is a huge step towards the modernisation of the trademark procedure in Brazil. The next step for Brazil’s trademark system will be done on March 9, 2020, when multi-class trademark applications will be accepted. The multi-class system is typically adopted by contracting parties to the Madrid Protocol upon entry, however, the move will come 6 months after Brazil’s accession. 

The National Institute of Industrial Property Office of Chile (INAPI) has also taken steps to modernise their intellectual property field. As of July 22, 2019, Chile is the 69th member of DesignView. Providing access to over 14.7 million designs in total, DesignView will now include over 4500 Chilean designs. DesignView was first introduced on November 19, 2012, and has since facilitated over 4.8 million searches from 163 countries, with China, Germany and the UK as the top 3 most frequent users.


Author: Danielle Carvey