On March 07, 2014, Administrative Order 39 came into force to change some items in the table of fees for services provided by the Brazilian Industrial Property Office – INPI.
Among the services with increased fees, the applications for recognition of well-known trademarks drew attention.
Prior to addressing the issue itself, it is worth recalling the scope of the well-known trademark protection in Brazil.
As a rule, under the Brazilian trademark law, a trademark is protected only in that market segment for which the registration was granted by INPI. An exception to this principle, called principle of specialty, is the well-known trademark.
Under the Brazilian law, a well-known trademark is that whose distinctive products or services lead it to surpass its original range of trademark protection. That is, in view of its recognition by a large portion of the consumer public, quality, prestige, repute and capability of attracting consumer by its mere presence, such trademark has a special protection in all fields of activity, rather than only in that field for which the trademark registration was granted.
On August 20, 2013 the Industrial Property Journal no. 2224 published Resolution 107/2013, which introduced a significant change in the method for the grant of this special right and improved the model for recognition of a well-known trademark registered with the INPI.
Said Resolution revoked Resolution INPI/PR no. 23/2013, which determined that the application for special protection to a well-known trademark should be filed with INPI through ancillary means, that is, upon objection to a trademark application or administrative proceeding to annul a registration.
On publication of the new INPI Resolution, the recognition of a well-known trademark became an independent stage of the process, not related to an objection and/or administrative proceeding for annulment.
The application for well-known trademark recognition must be made through a specific petition and payment of a special fee, which was recently regulated by the INPI upon publication of the new chart of fees on March 7, 2014.
As of effectiveness of Administrative Order 39, the INPI's Official Fees for recognition of well-known trademark varies from R$ 37,570.00 (e-petition) to R$ 41,330.00 (physical, paper petition). In the past, such requests would cost in average from R$ 1,500.00 to R$ 4,000.00.
Although the new system implemented through Resolution 107/2013 brought benefits to owners of well-known trademarks, which will not need to link recognition to a petition for annulment or objection, on the other hand such holders will be burdened in a significant manner, if compared with the amounts previously charged.
On the other hand, the increase in fees, although significant, will not discourage large companies, which need and are entitled to, this type of protection. On the contrary, the increase will make those requesting groundless special protections cease doing so, which may entail a reduction in applications and consequently, in the time for INPI to examine applications for recognition of well-known trademarks.
This is the expectation!
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