It goes without saying that a trademark enjoying good reputation
and fame is very often considered to be the most valuable asset of
a company.
The Brazilian IP Law bears some provisions reflecting this
importance. First of all, highly reputed marks covered by a local
registration deserve exceptional protection in "all fields of
activity".
Secondly, infringement of marks enjoying the status of high renown
may lead to an increase ranging from one third up to half of the
penalty to be established. Our IP Law came into full force in May
1997, but only in 2004 the BTO issued Resolution no.110 dealing
with the requirements to be complied with by trademark owners
seeking special protection for their brands. Under that Resolution,
the declaration of high renown could only be requested in concrete
cases of conflict, that is, in the framework of an opposition or
administrative nullity proceeding.
Resolution no. 110 was subject to heavy criticism, as it
considerably limited the possibility of trademark owners to request
special protection only in connection with administrative
proceedings against third parties' marks. The same criticism
applies to Resolution no. 121/2005 which superseded Resolution no.
110/2004.
This scenario has now dramatically changed by virtue of Resolution
no. 107 published in the IP Journal dated August 20, 2013, as it
reintroduced the so-called autonomous procedure, so that trademark
owners are again in a position to seek exceptional protection
without the need to challenge third parties' marks.
Pursuant to this autonomous procedure, the main requirements to
request the status of high renown are as follows: (i) the existence
of a trademark registration granted by the BTO and (ii) the
existence of consistent evidence showing that the mark in question
is broadly known throughout the Brazilian territory in all
circles.
Differently from Resolution no. 110 and 121, under which the
status of high renown was recognized for only five years, the new
rules set forth that special protection is granted for a period of
10 years, such a condition being renewable if the owner submits
suitable evidence attesting that the special status granted to his
mark still persists.
Under suitable evidence a broad spectrum of possibilities is to be
understood, such as for instance opinion surveys, publicity, sales
turnover in the last five years, amount of investment in publicity,
evaluation of the mark by an independent institute, etc.
Resolution no. 107 will only come into force upon approval of the
official fees for seeking such special protection. The pending
requests submitted to the BTO under the prior rules will be
examined without the need of paying the high fees for the new
procedure, provided that the interested parties file a petition
within 90 days informing the number of the third party´s
application or registration which served as basis for the request
of declaration of high renown. That deadline will run only when
Resolution n. 107 becomes effective.
In sum, it is not only a change, but indeed a significant
improvement, which comes to the benefit of companies holding marks
which qualify for special protection.
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.