Madrid Protocol

How to file an international application through the Madrid Protocol:

In order to make it easier, we have created a browsing panel with the step-by-step for submitting an international trademark application (INPI service code 3004 – Certificação de Pedido Internacional para transmissão à Secretaria Internacional (Certificate of International Application for transmission to the International Bureau)) with all links for the INPI systems. You may access it here.

We recommend that the use of browsers Google Chrome, Mozilla Firefox, or Microsoft Edge to fill out the international application electronic form (MM2) in the e-Marcas; to know why, click here.

The user may already file a multiple-class international application. To do so, he only needs to inform more than one basic application or registration in MM2 form.

Aiming at greater data security and a more efficient Certification process, it becomes necessary for the user to await the publication of his basic application in the Revista da Propriedade Industrial – RPI (INPI’s Gazette) (publication for purposes of opposition) before using it in his international application (MM2 in e-Marcas). We emphasize that there is no prejudice to the user due to this delay, given that he may use the basic application to claim Priority in his international application.

Questions on how to pay the fees or how to fill out the field related to payment to WIPO in MM2 form? Click here.

The services codes of INPI as an office of origin and their respective fees on October 23, 2019, may be accessed here. If the fee amounts are updated, the Federal Government Payment Form (GRU) will indicate the updated amounts.

For more details about filling out the international application form or about its processing, consult the Trademark Manual – Madrid Protocol, by clicking here.

The updated list of countries or organizations member of the Madrid Protocol is available at: https://www.wipo.int/madrid/memberprofiles/#/. On that same page, you may search details of the laws and regulations of those countries or organizations, which is important to evaluate the chances of your application.

After that, you may also check the Global Brand Database (www.wipo.int/branddb/en/) to search the mark that you wish to register in a database with over 34 million registrations of different sources.

Moreover, you may check the MGS Manager (https://www.wipo.int/madrid/en/video/mgs.html), which may assist you to translate your application from Portuguese into English or Spanish (MM2 languages) and to know whether the product or service that you intent to apply for is accepted in the countries where you wish to register your mark.

Before filling out your goods and services in your international application, check here some nonconformities pointed out by WIPO.

The list of decisions of the Madrid Protocol may be accessed here.

If you still have any questions, we are available at Fale Conosco (Contact Us), subject <<Marks – Madrid Protocol>>, which may be accessed here.

To see other documents of the madrid protocol click here.

Entry into force, advantages, and INPI’s preparation:

Entry into force and advantages of the Madrid Protocol:

As of October 2, 2019, the Madrid Protocol became effective in Brazil, and INPI undertook new activities. In the Madrid Protocol, INPI acts as an Office of Origin and as a Designated Office.

When the user chooses to apply through the Madrid Protocol, he may apply for the registration of his mark at the same time in several countries with a single application or registration, in a single language, with more predictability of the response time, with a single extension date (including for subsequent designations when he wishes to add countries to his portfolio of registrations of that same mark), with payment concentrated in a single currency, avoiding multiple conversion fees, and without the need for appointing a representative for application in the countries where he wishes to register his mark. Thus, the user reduces both his management costs and his total costs.

The Office of Origin INPI, sending national users’ International Applications:

A Brazilian applicant, or an applicant domiciled in Brazil or who has a commercial or industrial facility here – who already has one or more trademark applications or registrations submitted at INPI of Brazil (in this context referred to as “basic application(s) or registration(s)”) – and wishes to register his mark in other countries through the Madrid Protocol, files an international application, which may be a multiple-class application, at INPI. INPI, acting in this case as an Office of Origin, certifies the application, i.e., verifies, in addition to formal matters, whether the specification of goods or services presented is included in the specification of the basic application(s) or registration(s) of that(those) same owner(s) and whether the mark of the international application is identical to that(those) of the basic application(s) or registration(s). If there is no nonconformity to be remedied, INPI will send the application to WIPO within two months. WIPO will carry out formal requirements examinations and, if everything is correct, it will register such application (annotating the so-called international registration), publish it in the International Gazette (WIPO’s Gazette), and notify the countries chosen by the applicant. Each country will carry out the examination according to its own laws and regulations and send the response to WIPO, which will then forward it to the user. In addition to the foregoing, INPI, as an office of origin, is also responsible for monitoring the dependence of the international registration with respect to the basic application(s) or registration(s) for five years, and for informing WIPO if they are dismissed or extinguised. In case it occurs, WIPO, as the case may be, will cancel the international registration, in whole or in part. However, so that the applicant does not bear any losses, he may, within three months of the notice of cancellation of the international registration, apply for the transformation into a national application in each office of the countries chosen, keeping the same submission date.

Legend:

• Certificação de um Pedido Internacional = Certification of an International Application
• Quando um pedido internacional é depositado junto ao Escritório de origem, o Escritório deve revisá-lo e certificar que todas as informações fornecidas no pedido internacional correspondem à marca base. = When an international application is filed with the Office of origin, the Office must review it and certify that all pieces of information provided in the international application correspond to the basic mark.
• Esse processo é denominado certificação de um pedido internacional. = This process is referred to as certification of an international application.
• O Escritório de Origem recebe um pedido internacional. = The Office of Origin receives an international application.
• O Escritório revisa o pedido para garantir que os dados do(s) requerente(s) e a marca sejam iguais aos do(s) pedido(s)/registro(s) base e que produtos/serviços sejam iguais ou contidos nos do(s) pedido(s)/registro(s). = The Office reviews the application to ensure that the data of the applicant(s) and the mark is equal to that of the basic application(s)/registration(s) and that the goods/services are equal to or included in the application(s)/registration(s).
• Se forem encontradas quaisquer diferenças, o Escritório informa ao requerente. = If any inconsistences are found, the Office informs the applicant.
• Se nenhum problema for encontrado, o pedido internacional é certificado. = If no issues are found, the international application is certified.
• O Escritório trabalha em conjunto com o requerente para resolver os problemas encontrados. = The Office acts together with the applicant to solve the problems found.
• O pedido internacional é enviado para a OMPI. = The international application is sent to WIPO.
• O pedido internacional pode então ser certificado. = The international application may then be certified.
• Adaptado de: OMPI = Adapted from: WIPO

Legend:

• Visão geral do papel do INPI como Escritório de Origem = Overview of INPI’s role as an Office of Origin
• O Escritório de Origem tem um papel importante no processo de registro internacional. Este fluxograma descreve resumidamente cada etapa deste processo. = The Office of Origin has an important role in the process of international registration. This flowchart briefly describes each step of this process.
• O requerente é titular de um pedido ou registro de marca de base no INPI = The applicant holds a basic trademark application or registration at INPI
• O requerente deposita seu pedido internacional junto ao INPI via formulário e pagamentos específicos = The applicant files his international application with INPI through a specific form and specific payments
• O INPI revisa e certifica o pedido internacional. = INPI reviews and certifies the international application.
• O INPI envia pedido internacional para a OMPI = INPI sends the international application to WIPO
• A OMPI realiza um exame formal para garantir que o pedido atenda a todos os requisitos = WIPO carries out a formal requirements examination to ensure that the application meets all requirements
• A OMPI inscreve a marca no Cadastro Internacional = WIPO registers the mark in the International Registry
• A OMPI notifica os países designados pelo requerente. = WIPO notifies the countries designated by the applicant.
• A OMPI publica a Inscrição Internacional em sua Revista = WIPO publishes the International Registration in its Gazette
• A OMPI emite um certificado de inscrição internacional para o requerente. = WIPO issues an international registration certificate for the applicant.
• Adaptado de: OMPI = Adapted from: WIPO

The Office of Origin INPI, receiving International Designations from foreign users:

The foreign applicant who wishes to register his mark in Brazil through the Madrid Protocol will follow the same path, starting at the Office of Origin in his country, provided that it is one of the other 120 countries member of the Protocol. In this case, INPI will be the Designated Office and will examine the application according to the Brazilian laws and regulations, considering the trademark applications already registered or in progress at INPI. INPI will have up to eighteen months to perform a first analysis of the application, under penalty of automatic approval. That first analysis may result in formal requirements amendments or suspension, which interrupts the 18-month period, or directly in the final examination decision.

How is the international application filed by national users?

The application is filed electronically. First, as it currently is for national applications, the applicant must pay the Federal Government Payment Form (GRU), in this case for the certification service (probably code 3004, to be confirmed with the schedule of fees that will be published over the next few months). Then, he must fill out, in English or Spanish, form MM2 in the e-Marcas, a system that is also used for national applications and that tries to make filling out easier and avoid filling-out mistakes by the user. The other payments related to the international application will be made directly to WIPO, including the option of paying through WIPO’s website, where the user may use different payment methods, with online management.

How does the applicant get informed about the progress of his application or registration?

The user starts to follow his international application through the Madrid Monitor, available at WIPO’s website. The decisions related to his application or registration in all designated countries will be published in WIPO’s International Gazette, also available at WIPO’s website.

How may the user extend the term or add countries?

To pay the extension of his international registration or to designate new countries, the user may use the Madrid Portfolio Manager, available at WIPO’s website.

How is INPI preparing?
INPI received at the end of 2017 the mission to ensure the implementation of the Madrid Protocol, and it has been preparing since then for this new activity. The project contemplates legal, operational, and structural aspects, including:

- Reduction in the Mark examination time;
- Creation and modification of operating procedures;
- Preparation for examination of multiclass applications and applications with co-ownership;
- Development of new IT systems and changes in existing systems;
- Writing of Regulatory Acts;
- Public Queries;
- Updates in the Trademark Manual;
- Training of the team;
- Dissemination for the external public.

To see the data of the Panel of the Madrid Protocol, click here. (updated on April 2, 2020)

To access the Trademark Manual, click here.