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 – abpi@abpi.org.br), 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.

Conclusion

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 Mondaq.com.

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

Authors
 
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”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

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