Brazil's Accession to the Hague System: Milestones, Impact, and Future Prospects

New measures and formalities were put into effect, thus changing several procedures with which Brazilian Intellectual Property professionals, as well as foreign practitioners, were familiar.

Brazil's accession to the Hague System has significantly expanded the geographic scope of WIPO's International Design system, now covering 96 countries. The inclusion of Brazil, which has the largest economy in Latin America, not only increased the global reach of the Hague System, but also strengthened its position as a truly global and effective option for ensuring the protection of designs. Furthermore, Brazil's participation contributes to the harmonization of design protection practices on a global scale, promoting innovation and competitiveness of Brazilian companies in the international market.

The Hague System celebrated its first anniversary in Brazil in August 2024. The system officially came into force in Brazil on August 1, 2023, positioning Brazil as one of the first nations in South America to adopt this international framework. This milestone highlights the country's growing commitment to protecting Intellectual Property rights internationally.

The journey to membership was a thorough and deliberate process that lasted approximately two years. During this time, studies were conducted to ensure that the Hague System's integration aligned with Brazilian Intellectual Property laws and economic interests. The legislative basis was imposed with the approval of accession by both the Chamber of Deputies and the Brazilian Senate in the previous year. Following legislative approval, Brazil formally joined the Hague System on February 13, 2023, in accordance with the Geneva Act of 1999.

The adoption of the Hague System brought several benefits to Brazilian designers and companies. It offered a streamlined process for the international registration of designs, allowing its registration internationally through a single application, reducing both the time and costs associated with obtaining design protection abroad. Furthermore, it increased the global competitiveness of Brazilian designs, providing them with greater exposure and recognition in international markets.

Contracting Parties of the Hague System have the authority to make specific declarations to guarantee that the Hague System's international procedural framework meets local requirements. In the case of Brazil, its instrument of accession contains the following declarations:

• Applications cannot be filed through the Brazilian Patent and Trademark Office (BRPTO): Brazilian designers must file their applications directly with the WIPO and not through the BRPTO;

• Each application is limited to a maximum of 20 (twenty) variations: this rule allows a single application to cover both the main design and its variations, up to a maximum of 20 variations, making it easier to protect different versions of the same design. This statement is aligned with Article 104¹ of the Brazilian Intellectual Property Law (IP Law);

• Indication of the design creator/author is mandatory: this ensures that the authorship of the design is clearly identified, providing recognition and protection to the creators;

• Postponement of publication is not possible: in contrast with countries where design publication can be postponed to protect the novelty for a longer period, in Brazil, designs will be published after registration without postponement;

• Level Two designation fees will apply: fees that applicants must pay to designate Brazil on the International Registry are level two. These fees are generally higher and reflect the administrative complexity involved in the registration process;

• The maximum term of protection is 25 (twenty-five) years: protection for designs registered in Brazil can last up to 25 years, as long as quinquennium/renewal fees are paid periodically, ensuring prolonged protection for designs. This statement is aligned with Article 108² of the IP Law;

These declarations were established to ensure that the Hague System would be implemented in a manner that met Brazil's specific needs and conditions, while also providing Brazilian designers with the ability to protect their designs effectively on the international stage. On the other hand, the BRPTO also had to make adjustments in its local practice to be in harmony with the Hague System Guidelines. This culminated in the launch of the second edition of the Design Manual, which came into force on September 6, 2023—through Ordinance/INPI/PR No. 36., after a public consultation carried out by the BRPTO.

This second edition included several changes when compared with the previous practice in Brazil, such as the need to indicate by means of dotted or broken lines or coloring, the matter which is shown in a reproduction but for which protection is not sought.

Another new feature is the ability to register typographic families, which was not available in previous editions.

The inclusion of partial or entire trademark representation is now allowed. However, this does not extend any trademark rights to the owner of the design registration.

The changes also made it possible to protect designs that include textual elements of any kind and in any language, which was previously not accepted. Nonetheless, it is not permitted to include characters, words, or textual elements that refer to indications, dimensions, measurements, signatures, titles, etc. Their removal may be requested by the examiner.

When registering dynamic graphic interfaces, it was determined that static figures should be used in the order of presentation. Alternatively, frames must be presented.

Regarding the Brazilian designation, local examiners need to examine it within 6 months from the date of filing. If the international application does not meet Brazilian requirements, an office action shall be issued, and the response must be submitted directly to the BRPTO. Foreign applicants are advised to designate a local counsel to handle and file this response. In this instance, the examiners do not assess novelty and originality. A protected design may be granted without the analysis of these requirements by the BRPTO. This occurs because the registration of designs in Brazil does not involve substantive examination, which must be requested after registration is granted. Third parties and the BRPTO may challenge the registration of the design within 5 (five) years from the grant of protection. Recently, on May 27, 2024, the BRPTO issued Technical Note #01/2024, which establishes the ex officio correction of merely formal information in design applications to expedite decisions. The ex officio correction will only be carried out in cases where the design represented in the figures and other sections allows:

1. the unequivocal identification of a purely formal error;
2. the appropriate correction or deletion of information to allow its adaptation to the design represented in the figures, the other sections and the current regulation.

If there is no possibility of unequivocal verification of a merely formal error or of the due official correction, an official action for clarification and/or amendment to the information relating to the design shall be issued. Other changes are yet to be implemented, such as technical adjustments for the issuance of registration certificates. Currently, the issuance of granted registration certificates is temporarily suspended due to updates being made to the new process management system to enable their issuance. The BRPTO is working on these adjustments, with an estimated resolution date of August 30, 2024. Certainly, many steps remain to be taken in relation to the Hague System in Brazil, but the implementation process has already resulted in numerous substantial changes. Brazil has quickly emerged as one of the top 20 designated countries in 2023, despite its recent adoption: Brazil received 283 international designations and 630 designs, according to the Hague Yearly Review 2024 (WIPO 2024). Although the number of applications originating from Brazil was initially low, with only 28 applications recorded as of December 31, 2023—as indicated in the Hague Yearly Review 2024—recent searches show a notable increase. A new search conducted in July, 2024, in the Global Design Database, revealed that the number of applications originating from Brazil had risen to 90. This significant growth reflects an increase of over 220% in just seven months. This number reflects the acceptance and use of the Hague System by (i) designers and companies seeking to protect their designs in Brazil (Brazil as a designated member) and (ii) Brazilian designers and companies becoming more familiar with the Hague System and its benefits. It is, thus, very likely that the number of applications originating from Brazil will continue to grow. The successful implementation of the Hague System may have increased confidence in international design protection, encouraging more Brazilian companies to seek protection for their novel designs abroad. The accession to the Hague System has provided Brazil with notable visibility in the global Intellectual Property landscape, increasing the country's attractiveness to international designers and reinforcing its position as a significant market for design protection. The rapid adoption and the volume of designations received reveal the positive impact of the implementation of the system and the receptiveness of the Brazilian market to the protection opportunities offered by the international registration of designs.