The Brazilian National Industrial Property Institute (INPI), by means of Resolution No. 107 of August 20, 2013, has changed the procedure to request recognition of highly renowned trademarks in order to simplify the proceeding.
Highly renowned trademarks are those whose quality, reputation, and prestige are recognized by a large portion of the consumer public, surpassing the sphere of protection of the market segment where they are inserted.
Before, the INPI could only recognize the highly reputed status of a trademark incidentally, upon opposition against a third-party trademark application or in the event of a request to nullify a registration that reproduces or imitates a legitimate trademark for which the highly reputed status is sought. Therefore, the recognition of a highly renowned trademark by the INPI was mandatorily bound to the defense procedure by opposition or nullity of registration in third-party trademark proceedings.
Now, companies may request the recognition of highly renowned status at any time during the effectiveness of a trademark.
The recognition of a highly renowned trademark shall be requested by the trademark holder to the INPI through a specific petition with attached documents that evidence the recognition of the trademark by a large portion of the general public, its quality, prestige, and reputation associated to the products or services identified thereby.
The request will be analyzed by a Special Committee, and if the highly renowned status is recognized, the INPI will annotate this status in the trademark registration for a 10-year period, as opposed to the previous procedure, which granted merely 5 years of effectiveness to the highly renowned status.
The new procedure will be effective after the new INPI rates schedule is approved.
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