After more than 17 years of discussions, Brazil finally joined the Madrid Protocol.  President Jair Bolsonaro signed the agreement last week, and it was delivered to WIPO on Wednesday. With this, the PTO formalizes its participation and begins to operate the treaty in October 2019.


One of the main issues for this extremely long delay is that it was impossible for the PTO to perform the first examination of a trademark application in 18 months. The average time of examination in 2017 was 5.5 years (applications with opposition) and 2.5 years (applications with no opposition). The goal for the end of 2019 is reducing these timelines to 8 and 7 months, respectively. It is important to note that the backlog of trademark applications was reduced from 358,776 by the end of 2017 to 189,155 by the end of 2018.


Further to cycle time issues, the 3 hot topics regarding changes in the prosecution are:

  1. Co-ownership
  2. Multi-class system
  3. Obligation for foreigners to have a local attorney.


Regarding co-ownership and multi-class system, although not current practices in Brazil, it has been a long time demand from local applicants. The PTO understands that there is no legal barrier for introducing these changes.


The third point is more controversial. Rule 23bis of the Common Regulations of the Protocol allows the Office of a designated Contracting Party to send communications that concern an international registration but are not covered by the Common Regulations through the International Bureau of WIPO, provided the law of that Contracting Party does not allow the Office to transmit such communications directly to the holder. Mexico and Switzerland use this resource and apparently, Brazil is going on this direction.


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