The Madrid Protocol and its Implications on Intellectual Property

Por Marcello do Nascimento

Since October 2nd, 2019, the Madrid Protocol is effective, and this means many opportunities for the Intellectual Property Area and for companies/law firms performing or intending to perform in the international market.
What does, in fact, Brazil’s adhesion to the Madrid Protocol mean? This means that the country integrates an international treaty called the Madrid Protocol, regarding the international registration of trademarks and aiming at simplifying and reducing the costs of the procedures for registration of a trademark in foreign countries.
In effect since 1996, the Madrid Protocol gathers 121 countries comprehending 72% of the world’s population and 81% of the world’s GDP. In Brazil, the Instituto Nacional da Propriedade Industrial National Intellectual Property Institute received the mission of operationalizing the process in two directions: As the firm of origin, certifying and sending the request to the World Intellectual Property Organization (WIPO) within up to two months, and monitoring for five years the base request/registration; as an assigned firm, receiving assignments from the foreign applicants and performing the substantive examination of the assignments based on the national laws.
One single registration
With Brazil’s adhesion, the Brazilian companies are able to make one single registration of a trademark valid in the signatory countries used for such that with the law firm with nationally fulfills it. With the Madrid Protocol, such companies no longer need to have a proxy domiciled in the assigned country, there is the unification of the language and currency, in addition to monitoring centralization, which may expressively reduce the process costs. This is an important aspect in the companies’ growth strategy.
Evidently, the adhesion to the Madrid Protocol stirs up the Intellectual Property area and requests the adaptation of the law firms, but opens many opportunities, and among them, the service to companies which want to register trademarks internationally, but saw an impediment regarding the process costs and complexity.
Another possibility is the fulfillment of the international demand. The Madrid Protocol creates a favorable scenario for, due to costs or convenience issues, foreign companies to register their trademarks through assignment in Brazil.
With a trajectory of 50 years in the Intellectual Property area, law firm David do Nascimento Advogados has an up-to-date and qualified team to work with the Madrid Protocol and to expand the potential of businesses of national and international companies. We are optimistic with the new possibilities!

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