It is now easier to protect your company internationally: what changes with the Madrid Protocol

Registering the name, colors and images of your company is an important step to protect it, especially if you have plans to explore the international market. This measure has just gained a push from the Brazilain government: with the country’s accession to the Madrid Protocol, the trademark registration in 97 countries is facilitated, has significant reduction of costs and decreases the waiting time.

Bill n. 98/2019, approved in June, establishes that Brazil is now included in the agreement that allows trademark registration in a signatory country to be facilitated in all territories that are part of the Madrid Protocol. Together, these countries represent 80% of the world trade. The United States, Japan, Australia, China, Russia and most European countries are already on the list.

“The expectation is that Brazil’s adhesion to the protocol will debureaucratize the registration of brands internationally, thus making it flexible and quick to establish companies in other countries,” predicts Giulia Porto, a trademark registration specialist at Drummond Advisors, a company dedicated to the internationalization of companies and trademark registrations abroad. The Brazilian Institute of Industrial Property (INPI) estimates that the new rule may come into effect as early as October this year.

In practice

Giulia Porto clarifies that the procedure is not automatic, and there is no guarantee of registration. “The Madrid Protocol aims to facilitate and simplify the registration process abroad, in addition to reducing costs and allowing interested companies to predict the response time of applications; but, like every process, the analysis of the application is subject to the discretion of the country where the registration is intended,” she says. Another positive point is that the new system promotes permanent monitoring of brand protection in all countries where it is registered.

In order to benefit from the agreement, the registrant must request the replica of the protection request in the desired countries — and which are part of the agreement.

The expert also points out that the ratification of the agreement brings the possibility of Brazilians being holders of an international registration of mark in any office of protection of marks signatory of the treaty. Thus, for a faster registration, a Brazilian company or citizen may use a government agency other than Inpi to request an international registration and trigger the request to the other desired countries.

“With international strategic trademark offices, it is possible to obtain registration faster than in Brazil nowadays. The USPTO, for example, takes about 11 months to file an international trademark, while Brazil takes at least 2 years. In addition, it has much less rigorous criteria of analysis, regarding the description of the products and/or services of the brand — which is extremely advantageous for the entrepreneur who wants to reduce the time and costs of this process,” says Giulia Porto.

Common questions about trademark registration

The trademark registration establishes what we call presumption of legitimacy of use by the person who registered it. This prevents, for example, that third parties request their withdrawal from circulation. Giulia completes: “The certainty that there will be no problems in the selling of the product or service gives the brand owner the comfort to invest in advertising and marketing.”

She also emphasizes that the brand is a very important intangible asset of the company, thus, “the registration guarantees its stability, increasing the market value”. There is more: customs can be informed of the trademark registration and, thereafter, they begin to inspect the entry and exit of products that use the mark improperly, acting against piracy.

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