It is essential to ensure that adherence to the Madrid Protocol does not generate unwanted asymmetries between Brazilians and foreigners, which makes the application of the principle of non-discrimination an objective to be achieved by legislators.
In order to prepare the Brazilian system of registrations for the imminent adhesion, Bill 10.920/18 was drafted, with amendments to Law 9.279 / 96, aiming at maintaining isonomy between nationals and foreigners, without loss of competitiveness.
The main claim of the Bill is the inclusion of rules that will be followed by both Brazilians and foreigners who wish to register a trademark in Brazil. These rules are:
- Proof of activity compatible with the application for registration filed through the Protocol;
- Possibility of co-ownership of trademarks, which is currently prohibited by INPI;
- The possibility of filing in the “multi-class” system, in which a single application can be presented for different market segments;
- Publication of the application in Portuguese, for opposition purposes;
- Automatic approval of the application for registration if its regular examination is not completed within 18 (eighteen) months of the date of the filing;
- Also in requests made through the Protocol, the foreign holder must appoint a prosecutor with powers to receive court summons; and
- Need for declaration of use or justification of disuse during the sixth and during the last year of registration.
Currently the Bill is in the Committee on Economic Development, Industry, Commerce and Service, so that, if it deems necessary, amendments to the Project can be submitted before its judgment.
With or without the approval of Bill 10.920/18, adherence to the Madrid Protocol will generate important changes in the trademark registration process in Brazil. And our office will always be available to advise companies that wish to protect their assets in Brazil.
Lawyer Author of the Comment: Vittória Cariatti Lazarini
Headline: A adoção do Protocolo de Madri e o Projeto de Lei 10.920/18
“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”