I – Introduction
When the new Industrial Property Law (IP Law) became in force in Brazil1, a new treatment of well-known or famous trademarks was introduced into the Brazilian legal system.
In fact, in Brazil now, trademarks can be classified into different grades, depending on the degree of public knowledge that they command:
- Ordinary trademarks, not famous or well known : these trademarks can be registered in the class or classes corresponding to the products or services that they distinguish. This means that the protection of trademarks is ordinarily limited to the types of products or services for which they are used and in which they are registered. Registration of such ordinary trademarks will be granted provided that they are distinctive (that is, that they are not made up of words or signs commonly used to represent the product or service for which they are being registered); true (that is, that they do not lead the public into confusion); and relatively new (that is, that they do not copy or emulate previously existing trademarks in the same or connected class of products or services).
- Trademarks, although not famous or well known, but that cannot be ignored by a professional that works in the field of activity in which the trademark is used : these trademarks have the power to prevent that same professional from registering identical or similar signs or words for identical or similar products or services, even if they are not registered in Brazil. This power is granted by the IP Law to trademarks whose owners are headquartered or domiciled in Brazil or in other countries that provide reciprocal treatment2
- Trademarks that are well known in their fields of activity: these trademarks are protected under Article 6 – bis of the Paris Convention and under the IP Law3 regardless of their being registered or not in Brazil. The Brazilian Patent and Trademark Office (PTO) may deny registration to trademark applications reproducing or emulating a well-known trademark.
- Trademarks that are highly renowned enjoy special protection under the IP Law, in all fields of activity4. There is no definition, in the IP Law, to "highly-renowned", but the PTO’s interpretation of the IP Law indicates that they are trademarks with a unique distinctiveness and an unquestionable authority. They stand out by reason of their prestige, fame, good reputation and credibility, and such high renown extends beyond the field of activity in which they were originally registered (only trademarks duly registered in Brazil can enjoy the protection afforded to highly renowned trademarks).
The IP Law has not provided for any kind of registration or method of recognition of highly renowned trademarks. This was a significant departure from the previous system existing in Brazil. In fact, before the new IP Law was enacted, the previous Industrial Property Code5 provided for a special registration to "notorious" trademarks.
Under said previous system, many famous trademarks were registered as "notorious", and the list of such notorious trademarks served as a basis for preventing registration of identical or similar words or signs in any and all fields of activity, as well as of domain names, by third parties.
After the new IP law was enacted such registration was discontinued by the PTO, and many interested parties filed lawsuits to obtain from the Courts a declaration that their trademarks are recognized as highly renowned.
Finally, on January 27, 2004, the PTO issued Resolution 110/2004, with the purpose of regulating the procedures for application of article 125 of the IP Law, that deals with highly renowned trademarks6.
II – Resolution 110/2004:
Resolution 110/2004 provides that the owner of a highly renowned trademark can request to the PTO the special protection afforded by article 125 of the IP Law only in case of an existing conflict with a third party trademark.
A first reading of Resolution 110/2004 indicates only two circumstances in which the recognition of the high renown of a trademark can be claimed: when opposing a third party application or when applying for the administrative nullity of a third party trademark. In both circumstances, the high renown of a trademark will be used to attack a third party application or registration.
There seems to be, however, other circumstances in which the high renown of a trademark could be claimed, for instance, as a matter of defense in an attack from a third party against a famous registered trademark, through an administrative nullity request, and possibly in other circumstances as well. Although Resolution 110/2004 does not expressly mention such other circumstances, there seems to be no reason not to be able to use the high renown of a trademark in such circumstances.
In any event, Resolution 110/2004 does not provide for any means for the owner of a famous trademark to request to the PTO the simple recognition of the high renown of the trademark, in the absence of a conflict with a third party trademark.
Additionally, other parties not involved in the direct conflict are precluded from interfering in the recognition – or not – by the PTO, of the high renown of the trademark. This circumstance does not seem to be fair, as third parties not directly involved in an actual conflict may have a stake in the extension of the high renown protection to a given trademark. In such cases, the only possible remedy will be to appeal to the Court system.
The following evidences – among others – of the high renown of a trademark can be used at the PTO, according to Resolution 110/2004:
- Date the trademark was first used in Brazil;
- Number of users or potential users of the products or services to which the trademark applies;
- Percentage of users or potential users of the products or services distinguished by the trademark, as evidenced by a public opinion poll or by any other means;
- Percentage of users of other market products that, immediately and spontaneously identify the trademark with the products or services to which the trademark applies, or that recognize the trademark as a result of its tradition and quality, as proved by means of a public opinion poll, or market research, or by any other viable means;
- Sales channels of the trademark in Brazil;
- Geographical breadth of the sales of products or services identified by the trademark within Brazil and, if necessary, abroad;
- Time during which the trademark has been in the market in Brazil, and, if applicable, abroad;
- Means by which the trademark has been marketed in Brazil, and if applicable, abroad;
- Time during which the trademark has been publicized in Brazil and, if applicable, abroad;
- Amounts invested in publicity / propaganda of the trademark in Brazilian media in the last three (3) years;
- Volumes of sales of the products or services identified by the trademark in the last three years;
- Economic value of the trademark as an asset of the company.
The high renown of a trademark can be contested by the owner of the denied application or of the cancelled trademark, by means of presentation of evidences demonstrating that such high renown no longer subsists. However, Resolution 110/2004 does not list the types of evidences that can be used for this purpose. Negative evidences are often more difficult to obtain than positive ones.
A special committee of three members of the PTO will be appointed to review and decide on oppositions or administrative nullity requests in which the high renown of a trademark is claimed.
Once the PTO recognizes that a trademark deserves the protection in all classes of products and services afforded by its high renown, such condition will prevail for five years. During such period, the owner of the highly renowned trademark will not be required to submit fresh evidences of such high renown in other similar cases (unless the PTO requires additional evidences).
The high renown status will be cancelled in case of extinction of the trademark or in case the PTO recognizes that the high renown does not subsist.
The recognition of the high renown of a trademark will be informed by the PTO to the Internet Committee, for purposes of avoiding the registration of such a trademark as a domain name by third parties without the trademark owner’s consent. Likewise, the cancellation of this high renown recognition will also be informed to the Internet Committee.
Although Resolution 110/2004 was enacted to clarify doubts and to permit the full use of the high renown protection afforded by article 125 of the IP Law, a number of doubts continue to exist in connection with this issue.
Footnotes
1. Law 9279, dated May 14, 1996, which came into full force on May 15, 1997.
2. Law 9279, article 124, XXIII.
3. Law 9279, article 126 and paragraphs 1 and 2.
4. Law 9279, article 125.
5. Law 5772, dated December 21, 1971.
6. Article 125 of the IP Law provides that: "Marks registered in Brazil and considered to be highly renowned will be guaranteed special protection, in all fields of activity."
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.
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