As a rule, Brazilian trademark law protects only the trademarks in market segments in which the registration was granted by the Brazilian Patent and Trademark Office ("BPTO"). An exception to this principle - the principle of specialty - is the famous trademark.
According to Brazilian legislation, famous trademarks are those whose ability to distinguish the products or services designated by them and whose symbolic efficacy cause them to be projected beyond their original scope of protection. That is to say that famous trademarks, due to their recognition by a large number of consumers, quality, prestige, reputation and ability to attract consumers by their mere presence, are given special protection for all fields of activity, and not only for the one in which the trademark registration was granted.
On August 20, 2013, Resolution no. 107/2013 was published in Revista da Propriedade Industrial no. 2224 (Industrial Property Magazine), introducing a significant change in the form of granting of this special right, enhancing the model for recognition of famous trademarks by BPTO.
The resolution revoked INPI/PR Resolution no. 23/2013 that determined that the special protection for famous trademarks should be requested to BPTO incidentally, that is, upon opposition to a trademark application or upon a trademark registration administrative nullity procedure.
With the publication of the new BPTO resolution, the acknowledgement of a famous trademark became an autonomous step in the procedure, and is no longer connected with a request for opposition and/or an administrative nullity procedure.
The application for famous trademark must now be made by means of a specific petition, with the payment of a special fee pursuant to BPTO's remunerations table. The resolution will be effective in the date that BPTO publishes the specific fees for this procedure.
Proof of fame is connected with three requirements considered essential by BPTO, namely:
- trademark recognition by a large portion of the general public;
- quality, reputation and prestige associated by the public with the trademark and its products/services; and
- degree of distinctiveness and exclusivity of the trademark.
BPTO recommends submitting as proof of the trademark's fame: market researches, media plans, news stories and articles published by various types of media, national trademark image research and any other documents the owner of the trademark deems important to prove that it deserves the special protection for famous trademarks.
The application for famous trademark will be analyzed by a special BPRO committee composed of officials of the Trademark Office and chaired by the Trademark Director.
Once the application for famous trademark is granted, the trademark will have special protection for 10 years. At the end of such period, the trademark owner must file a new application for famous trademark before the BPTO.
Tatiana Campello and Julia Davet Pazos are, respectively, partner and lawyer in the Intellectual Property area of Demarest Advogados.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.