The Madrid Protocol and the Registrability Assessment of Certification Trademarks in Brazil: Current Challenges

Abstract Brazil protects trademarks under the Industrial Property Law, Law No. 9.279 of 14 May 1996 (hereinafter the ‘LPI’). It is only since the introduction LPI that the certification trademarks have begun to be explicitly protected separately from other marks. Certification trademarks are classified according to their nature, which includes formal and material particularities that substantially differentiate them from other sorts of trademarks, such as those for products and services, and collective ones. This paper describes and comparatively analyzes the assessment of the registrability of certification trademarks in Brazil under the scope of applications filed via the national proceedings and via the Madrid Protocol proceedings. The methodology employed was qualitative and exploratory. There is no specific literature on this issue in Brazil, and the study has been based mainly on the online portal of the Brazilian National Institute of Industrial Property (hereafter the ‘INPI’) because it provides the guidelines for registering trademarks in the country through the vast content of the Trademark Manual and also all the data for the trademarks that have been filed there. The information available via this search tool made it possible to compare and analyze the data and identify significant asymmetries between the two proceedings. It is understood that these asymmetries can lead to different kinds of conflicts. Therefore these two different proceedings nowadays constitute a challenge that will need to be addressed. Searching for, debating and the promoting efficient solutions on this matter are recommended. Suggestions for future research are also raised.