Brazil: Highly Renowned Marks – Regulation Introduced By INPI Resolution No. 110/04

Last Updated: 10 December 2006
Article by Ana Lúcia De Sousa Borda

The Guidelines in the Context of the Previous Legislation

Before addressing highly renowned marks, in order to provide a context for the subject of this report, it is appropriate to quickly review what is set forth in Article 233 of Industrial Property Law (IPL) No. 9,279/96 – contained in the chapter on temporary provisions. Under this provision, applications for recognition of a mark’s renown were ultimately dismissed, whereas previously granted recognition prevailed until the term for the respective claim expired, independent of extension of the original registration.

Under the previous legislation, Law No. 5,772/71 (CPI), the mark considered to be renowned was ensured special protection in all classes, holding its own registration to prevent others from reproducing or imitating it, in full or in part, provided that confusion could arise as to the origin of the goods, merchandise or services, or disparagement of the reputation of the mark.

Under Article 67, recognition of a mark’s renown was granted when its holder filed a request in relation to a previously granted registration, provided that certain conditions were met. The main condition was widespread identification by a large percentage of the Brazilian population, which was established through market survey. Under this system, autonomous recognition was granted, meaning that the status of renown was recognized based on the registration and without a dispute having occurred.

The Current System

The aforementioned IPL, in its Article 125, introduced the designation of highly renowned mark by determining that marks registered in Brazil that were considered highly renowned would be granted special protection in all classes. This is a felicitous change, since this term is more in line with the existing doctrine.

This new wording, however, left the interested parties, directly or indirectly, without administrative means to obtain this protection. The issue sparked considerable controversy, which was at least partially settled with the passing of Resolution No. 110/04. This resolution establishes the procedures for applying for the recognition of the high renown of a mark. In contrast to the former legislation, the new rules established a system at that time unprecedented in our trademark law: incidental recognition of high renown.

The INPI may determine incidental recognition of high renown in the records of opposition or administrative nullity proceedings. No other options are available to the party applying for the status of high renown before the INPI.

Criticism of the Current System

Even though the interested circles were in favor of a regulation, Resolution No. 110/04 has been widely criticized, many take the view that the interested party should be provided additional alternatives, most notably the autonomous recognition provided for in the previous legislation, as noted above. Critics of this system argue that the incidental claim for a mark’s recognition as highly renowned sets the stage for groundless oppositions or nullity proceedings designed merely to obtain high renowned status. It should be noted that not all trademark owners would take this course, and their marks would remain unprotected due to the lack of legal provisions for the INPI to grant autonomous (the holder’s filing for his own registration) or ex officio recognition. Some therefore consider the possibility of the INPI issuing highly renowned status at the request of the interested party for his own registration (autonomous recognition), and of its own authority. These are the main changes proposed in Resolution No. 60 of the ABPI (Brazilian Intellectual Property Association –, submitted to the INPI in October of 2004.

Application of Resolution No. 110/04

Since the passing of the aforementioned Resolution, the INPI has issued highly renowned status to the marks "McDONALD’s," "HOLLYWOOD," "PIRELLI," "VISA," "KIBON," "MOÇA," "AYMORÉ," "3M," "CICA," "NATURA," "NINHO," and "FIAT."

The analysis of virtually all the opinions on which claims of high renown were based indicates the decisions have the following points in common:

  1. evidence was provided that the mark was in use and protected in Brazil for a considerable period of time. In the large majority of cases, the mark was found to be in use in Brazil for at least some decades;

  2. the nature of the goods or services designated by the mark was a determining factor in ascertaining the scope of the target public. In all the cases analyzed, use of the goods or services by a broad range of the population was considered an important factor in establishing it as highly renowned;

  3. consumers immediately and spontaneously connected the goods or services with the mark claiming high renown;

  4. the geographic scale of commercialization of the goods or services is unquestionably a major factor in assessing its renown;

  5. heavy investments in marketing and advertising in Brazil were considered. In specific cases, such as in the case of the marks "McDonald’s" and "Pirelli," the owners’ spending on marketing and advertising internationally was taken into consideration as well;

  6. substantial sales volume was reported for the goods and services designated by the mark. This volume, geographic scale, and an extensive target public, as noted above, attest to deep penetration of the mark in the domestic market.

Another factor noted in some of the opinions was the mark’s high degree of distinctiveness and singularity in relation to the goods or services covered. Although doctrine and previous court decisions value singularity, or the marks commercial identity, the fact is that marks initially lacking any considerable distinctiveness may acquire it as a result of their continued use.

Among the opinions analyzed, some stand out, namely those regarding the oppositions presented to the applications for trademarks "3EMES," "Aimoré," "Novo Ninho" and "Fyat-K," and the nullity request against the registration of trademark "VISA SEGURANÇA." Assessing the oppositions, the Special Commission approved them based solely on Article 125 of the Intellectual Property Law (IPL), recognizing as highly renowned, therefore, the marks "3M," "Aymoré," "Visa," "Ninho," and "Fiat."

Another opinion was grounded on the decision issued for two oppositions to the mark "Ki-Bona," the first based on the mark "Kibon" and the second based on, among others, registration for the mark "Q’boa." Both oppositions were partially approved: the opposition linked to the mark "Kibon" was supported by the renown of the sign, while "Q’boa," although not recognized as highly renowned, was considered an obstacle to the registration of "Ki-Bona."

In the large majority of cases analyzed, the Special Commission ruled that the marks in question were highly renowned, concluding that the fame and reputation established by the mark "make it economically attractive," and for this reason deserving of greater protection, meaning special protection in all classes of goods and services.

Although the decisions addressed herein may still be challenged, the analysis of the opinions issued by the INPI expose the criteria to have a mark recognized as highly renowned.

From these decisions it can be deduced that current law and Resolution No. 110/04 handle high renown marks in a manner quite different from that of Law No. 5,772/71. Under current regulation, high renown may be granted, and immediately thereafter give cause to reject an application or cancel a registration that has already been issued, regardless of whether any of the legal grounds for rejecting registration are applicable.

The fact that highly renowned status – recall, alone – may justify and has justified, as seen, the dismissal of marks considered to be conflicting is the consequence of a fundamental principle, which offers protection to high renowned marks by repressing unjustified profiting or parasitic use.

As previously noted herein, former legislation conditioned special protection for renowned marks on the possibility of confusion arising as to the origin of the goods or services. The current system renders this condition irrelevant. However, it would be premature to conclude that the absence of this condition in the current law necessarily renders highly renowned marks more powerful than renowned marks. Both are characterized by magnified potential for confusion or association; otherwise, they would not be highly renowned or renowned.

Nevertheless, one noteworthy aspect of protection of highly renowned marks is the more intense effort with which attempted parasitic use is combated, which shields highly renowned marks from much feared dilution. This is made perfectly clear, for example, in the decision denying the application of the trademark "FYAT-K" in class 05 (pharmaceutical preparations) based on the high renown status issued for the mark "FIAT."

Fame (Renown) And High Renown – Their Distinct Value In The Previous And Current Systems

The previous legislation called for an extremely high degree of recognition of the mark by domestic consumers, so that renowned status was restricted to a very limited number of marks. Despite this rigorousness, the mark holder was not required to provide further proof in the future, since the status could be extended indefinitely provided the initial registration were extended. This system did not take into consideration the possibility that after being declared famous, a mark’s standing could change with the passing of time.

Under the current system, highly renowned status is granted for five years. What follows is of critical importance: that a market evaluation is essential for extension of the status as highly renowned, if desired. Therefore, assessment of high renown considers a mark’s current identification, so that the past has relative value and the future is not guaranteed. The past is said to have relative value in light of the fact that one of the criteria for ascertaining a mark’s renown is its history and tradition.

This treatment is unquestionably much more consistent with the harsh reality of a market that does not tolerate inertia. Although the decisions handed down to date support the conclusion that high renown is attributed to marks with a substantial degree of consumer identification, the fact is that the ambitious holder dedicated to maintaining highly renowned status as an additional factor for enhancing his mark’s value must assume an arduous task: to provide evidence periodically that his mark continues to warrant recognition as highly renowned. This presupposes investments and effort in many areas, not only marketing and advertising. In summary, high renown does not ensure the holder lasting legal security.

Additionally, the new system allows those whose applications were denied or registrations cancelled following declaration of highly renowned status to challenge this decision. First and foremost, the interested party must provide evidence that there was insufficient proof of the mark’s high renown, or that it no longer exists.

Advantages Of Highly Renowned Status

Once the status of high renown is granted, the INPI will register this in the trademark system, where it will be held for five years. The high renown status is most certainly an element that adds value to a mark recognized as such. As a result, the mark’s holder will more easily be able to provide evidence in any administrative or legal proceeding where he must defend his mark against violations. In this respect, note that high renown, once declared, does not exempt the holder from submitting, whenever necessary, new oppositions or requests for administrative nullity. This is precisely due to the system’s incidental character. High renown is examined any time a new trademark dispute arises. However, the holder will not be subject to the specific payment set forth in Resolution No. 110/04, nor called to resubmit the evidence already filed in the documents of the initial recognition. The Resolution stipulates that new evidence must be submitted only if required by the INPI.

Another advantage of highly renowned status is that it extends the imprisonment sanctions provided for in IPL Article 196, Item II. Under this provision, imprisonment for crimes against marks is increased between one-third and one-half if "the mark altered, reproduced or imitated is well-known, highly renowned, certification or collective."

Finally, under Resolution No. 001/98 of the Brazilian Internet Steering Committee, FAPESP (responsible for domain registration) shall prohibit the registration of domain names that reproduce high renowned marks.


Despite the criticism of this new system, the fact is that recognition, both autonomous and ex officio, even if addressed in future legislation, should follow similar parameters as those adopted for incidental recognition; otherwise, distortions may arise to the benefit of some parties, and consequently in detriment of others. In any event, the highly anticipated regulation of IPL Article 125, instituted by Resolution No. 110/04, affords a large number of potential title-holders the possibility of obtaining highly renowned status according to clear criteria that are more appropriate in current market conditions.

Note of the author: On December 13, 2005 Resolution no. 121/05 was published in the Industrial Property Journal. This Resolution expressly revokes Resolution no. 110/04 and was enacted on December 13, 2005 as well. Apart from providing a definition for high renowned marks and determining that the President of the BPTO will decide on administrative nullity requests and on appeals based on high renown, no further significant changes have been introduced.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions