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The Madrid Protocol Now Has a Brazilian Touch

By Mrs. Ana Lucia de Sousa Borda, Danneman Siemsen - 26/06/2020

The entry into force in Brazil of the Madrid Protocol in October 2019 brought not only a new way of protecting trademarks for Brazilian entrepreneurs abroad, but also significant changes, as well as challenges for those professionals working in the area of trademarks. One of these challenges is the translation of the names of various ingredients in our cuisine, drinks, typical dishes, musical instruments and artistic expressions into English or Spanish, the languages adopted by Brazil to use the Madrid Protocol. Often, what is expressed in the source language in a single term needs to be translated by means of a sentence in order to be understood.

When Brazil is mentioned, associations with caipirinha [a cocktail, made with cachaça, sugar, ice and lime] or feijoada [a  stew of beans with pork] emerge spontaneously and even immediately. Not to mention cultural products and the arts in general, where especially samba [a music genre and dance style, with its roots in Africa] and capoeira [an Afro-Brazilian martial art that combines elements of dance, acrobatics, and music], without demeriting other expressions such as chorinho [an instrumental Brazilian popular music genre which originated in 19th century Rio de Janeiro], for example, are known around the world when thinking about our country.

These terms emerged at different times and in different contexts of our history and the repeated use over the centuries resulted in their incorporation into our language, forming our identity. In the specific case of feijoada, it should be remembered that it was declared intangible cultural heritage of the Rio de Janeiro State in Brazil pursuant to Law no. 6647/2013.

A great initiative by members of the Directorate for Trademarks and the Classification of Goods and Services Committee (CCPS) at the Brazilian Patent and Trademark Office (BPTO) [National Institute of Industrial Property (INPI)] together with the World Intellectual Property Organisation (WIPO) resulted in the formulation of a robust list of typically Brazilian goods and services and their inclusion in this organisation’s classification, in the so-called “Madrid Goods and Services Manager (MGS)” with the respective translation. There are 668 descriptions of the most varied typically Brazilian fruits, dishes, drinks and services available here.

According to information on the BPTO’s website, the preparation of this list aims to prevent offices in other countries from granting protection as a trademark for designations that are actually descriptive of the product or service itself. This study took into account the fact that not only Brazilian legislation, but also that of the vast majority of countries prohibit registration of descriptive and/or generic terms as a trademark in relation to the respective goods or services.

In addition, it is necessary to pay attention to what the principle of the veracity of trademarks addresses. By virtue of this principle, a trademark cannot be misleading, that is, it cannot mislead the consumer or lead to an improper association with respect to its origin, composition or place of production, among other factors.

In 2008 there was great controversy around the word rapadura [unrefined whole cane sugar, which is a solid form of sucrose derived from the boiling and evaporation of sugarcane juice], registered as a trademark by a German company not only in Germany but also in the United States. After diplomatic efforts, the company waived the registration of the trademark “rapadura” and adopted a compound form, without any exclusive right to the term “rapadura”.

There was a similar situation with “açaí”, the name of a fruit that is typical to Amazonia, which was registered as a trademark by a Japanese company in 2003. After extensive negotiations, with the involvement of the Department of Genetic Heritage at the Ministry for the Environment, and substantiated on the legitimate concern of Brazilian açaí producers and exporters of infringing the registration in question, the “Japan Patent Office” cancelled the registration for the trademark “açaí”.

This partnership has therefore come to avoid situations like these. In addition, the compilation is meant to facilitate the work of Brazilian applicants who are interested in protecting their trademarks abroad, especially when drafting the specifications in the particular case. This mechanism also serves to understand such terms by those who do not speak Portuguese, since the trademarks are published for possible objections by third parties. Hence the importance of an appropriate translation.

When going through the list, Brazilianness emerges in all its magnitude. Good examples are the aforementioned feijoada (bean and meat based dish), the venerated brigadeiro (sweet made of condensed milk and chocolate), pão de queijo (Brazilian cheese bun), caipirinha (sugarcane-based alcoholic beverage), rapadura (brown sugar in the form of a small brick), carne de sol (sun-dried salted meat), aulas de samba (samba [dance] instruction) and the practice of chorinho [music] (practical training of chorinho [music]), to mention just a few.

The compilation of these descriptions of goods and services and their inclusion in the “Madrid Goods and Services Manager (MGS)” with the English language equivalent can be considered an important milestone and a commendable effort, not only for the reasons already explained, but also for validating aspects of our culture and tradition. 

By Mrs. Ana Lucia de Sousa Borda, Danneman Siemsen - 26/06/2020
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