Madrid Protocol & the Requirement of a Local Attorney in Brazil

WIPO proposes the creation of a footnote to address the legal requirement of appointment of a Brazilian attorney in Brazilian IR designations under the Madrid System

By Gabriel Leonardos and Flávia Tremura

It has been recently proposed by the World Intellectual Property Office’s (WIPO) to amend WIPO forms used to designate Brazil in new trademark applications, subsequent designations and/or recordal or of change of name or ownership within the Madrid Protocol system.

The proposal is an attempt to adequate the system to the statutory requirement that exists in Brazil (Section 217 of the Brazilian IP Act), according to which a person domiciled abroad must maintain permanently a duly qualified attorney resident in the country, with powers to represent him administratively and judicially, including for receiving summons.

In fact, as we have been consistently warning our clients, it is mandatory, under Brazilian law, that all owners of Brazilian IR designations under the Madrid System designate a local attorney empowered to receive administrative or judicial summons, under the penalty of having the Brazilian registration extinct, as mandated by Section 142, IV of the Brazilian IP Act.

This new proposal aims to ensure that the trademark owner will be summoned by mail, in case of a lawsuit being filed concerning the Brazilian registration, so as to avoid the summoning of foreign companies through the system of rogatory letters that could be costly, time-consuming and bureaucratic.

As other alternatives are being discussed, a temporary solution was proposed by the Regional Director of WIPO to complement the footnote disclaimer already present in the Madrid forms (MM2, MM4 and MM5) to foresee the following:

“By designating Brazil, the applicant declares that the applicant, or a company controlled by the applicant, effectively and lawfully conducts business in connection with the goods and services for which Brazil is being designated; and, agrees to receive, by mail, notifications, including judicial summons, not covered by the Madrid Protocol concerning the international registration of the mark that is the subject of this international application, issued in administrative or judicial proceedings held in Brazil.“ (in bold is the additional text being now proposed).

The proposal was received by the Brazilian Patent & Trademark Office – BPTO, that consulted the General Attorney for the Federal Government, who, on April 19, 2021, issued a favorable opinion to its implementation.

However, the General Attorney also mentioned the need to modify the Brazilian IP Act and suggested three different options, aiming the flexibilization of this requirement in case of International Treaties. It was suggested, for instance, that, in case of a lawsuit, WIPO could be informed to notify the IP owner to constitute an attorney and comply with Section 217 of the Brazilian IP Act.

There has been no final decision yet. This matter is receiving the attention of the authorities and still being debated.

So far, since the Madrid Protocol became in force, on October 2nd, 2019, no registration has been issued, something expected to occur shortly. It is likely that these decisions are being postponed until a decision is made regarding this matter of the local representation, as most Brazilian designations under the Madrid System still do not have a local attorney designated.

As the only fool-proof method for safeguarding the validity of trademark registrations in Brazil, we advise our clients with Brazilian IR designations to formally appoint an attorney of record before the BPTO as early as possible. This also ensures that the applicant receive all publications regarding the prosecution of their designations, as the BPTO does not send to WIPO all information pertaining to the prosecution in Brazil, nor the corresponding Certificate of Registration.

Should you need more information on this matter or other subject related to the Madrid Protocol, please contact our partners Flávia Tremura Polli Rodrigues or Gabriel Leonardos, or your usual person of contact in our firm.