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February 5, 2013

Concepts and protection involving famous marks in Brazil

Managing IP Magazine – March 2013

 

Fame

Depending on the degree of reputation or recognition of the mark, it may be qualified as WELL-KNOWN or HIGLY REPUTED (widely recognized by the general consuming public; well-known to the public at large), being protected under different levels.

Legal protection to well-known marks

WELL-KNOWN marks in the form of Article 6bis of CUP are protected under the Brazilian IP Law against imitation or reproduction in the same or related market segment. Pre-existence of a regular application or registration is not a condition to seek the protection. Being this an exception to the first-to-file rule in force in Brazil, the Brazilian Law requires that the Opponent files an application for its own mark in order to enforce the special protection.

Recognition of the well-known status of the mark may be obtained incidentally, either before the Brazilian Patent and Trademark Office in the course of an opposition (pre-registration) or administrative nullity proceedings (post-registration), or before the Brazilian Courts.

Although effective use of the mark in the Brazilian market is not a condition for the recognition of the well-known status, strong evidence that the mark has become well-known in the specific Brazilian market segment is required.

WELL-KNOWN factors usually considered by the BPTO and also by the Courts are the duration and extent of advertising and publicity in Brazil; expenditure with advertisement and consistent investments in the promotion of the mark; territory and period of validity of the existing registrations for the mark; worldwide sales of goods under the mark.

There is no Well-Known Marks Register in Brazil. A favorable decision recognizing the well-known status of the mark may be used as a basis in another conflict case, but does not afford legal certainty to protection. As there is no set term of validity, the well-known status of the mark may be refused or contested at any time.

Legal protection to Marks of High Reputation

HIGHLY REPUTED marks are protected under the Brazilian IP Law against imitation or reproduction in all classes of goods and services. The mark needs to be registered in Brazil to enjoy this largest scope of protection. Being this an exception to the principle of specialty of the marks, evidence that the mark has acquired an expressive degree of reputation, knowledge and recognition beyond its relevant sector is required.

Recognition of the highly reputed status of the mark may be claimed only before the Brazilian Patent and Trademark Office, incidentally, in the course of oppositions or administrative nullity proceedings and if granted it is recorded and valid for five years. Therefore, unless the highly repute status of the mark has already been recognized by the BPTO in a previous opposition or administrative nullity request, the special protection is not enforceable against a mark that is being used but has not been filed or registered.

There is a procedure (the BPTO’s Directive) for recognition of the status of HIGH REPUTATION of a mark in Brazil, but this is neither autonomous nor a registration procedure. The famous factors and criteria for recognition are much stricter than for the well-known marks of the 6bis of CUP.

The good news is that the BPTO is about to release the new guidelines setting forth the procedures on how to obtain the recognition of the status of high reputation of a mark. The new rules should be more flexible and bring important changes to the entire process. Amongst the changes expected, the proceedings will no longer be incidental, the status of high reputation of the mark will be claimed in the files of the corresponding registration; the validity of the declaration should be extended from 5 to 10 years with possible renewal. It should provide for an opportunity for third parties to object to the declaration of high reputation.

Dilution

In Brazil dilution is not available as ground for opposition and administrative nullity proceedings.

Dilution exists when the distinctive character or reputation of a famous brand is likely to be damaged by the use of an identical or similar mark, independently of the segment of the mark or whether there is a likelihood of confusion or competition.

The marks of HIGH REPUTATION in Brazil (highly renowned marks; marks which are well-known to the public at large) already enjoy protection against dilution, not exactly under the dilution doctrine, but rather as a result of the large protection afforded to them by the Brazilian IP Law.

The owners of WELL-KNOWN marks may rely on the protection afforded by Section 16(3) of WTO TRIPS Agreement, which is in full force in Brazil per Decree 1355 of December 30, 1994, though their marks need to be registered in Brazil. However, the Brazilian Courts are more willing to enforce this legal provision than the BPTO.

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