Member Article

Abstract:Following the provisions of the TRIPS agreement, the Brazilian Industrial Property Law affords special protection to famous (highly renowned)  trademarks in all fields of activity.  Once a mark is recognized as famous  this status is duly recorded by the Brazilian Trademark Office (BPTO) and the mark enjoys special protection extensive to all classes of products and services, enforceable for a period of 5 years against infringing The recognition of fame has high standards of proof and must be pled incidentally, as part of  an opposition or administrative nullity proceeding at the BPTO.

Marks which are simply well-known in their field of activities shall also enjoy special protection, despite being previously registered in Brazil. 

Hereinafter you will find relevant information on how to achieve special protection for well-known or famous marks in Brazil.

Protection of Well-Known Marks in Brazil

As Brazil adopts the statutory first-to-file system, exclusive trademark rights shall derive from a valid trademark certificate issued in the country. Notwithstanding, Brazilian law brings provisions for protection of well-known marks which may figure as an exception of the first-to-file rule.

According to the provisions of item 126 of the Brazilian IP law, a mark which is well-known in its field of activities enjoys special protection independently from previous registration in Brazil. If a mark is considered well-known in its field, the owner shall be able to overcome anticipations registered for same or similar marks in order to achieve registration within the territory. 

It is relevant to note that, as opposed to famous marks, well-known marks in Brazil are considered marks that have not achieved a striking reputation, although they can be regarded as a reference in their specific field of activities or simply be well-known in their business.

For the purposes of claiming special protection, the owner of a well-known mark in Brazil must: 1) file a trademark application in order to demonstrate good faith in registering and using the mark in Brazil and 2) bring relevant proof of the well-known status of the mark in the country of origin or elsewhere. 

Evidence of the well-known status includes available certified copies of worldwide trademark certificates, marketing material, amount of sales, channels of distribution and any documents which can demonstrate vast use and rights over the mark worldwide.

There is neither a  special procedure for declaration of the well-known of a mark in Brazil,  nor  a recording procedure for that purpose. Well-known status means  simply  a  recognition  made by the Brazilian Trademark Office  at  the occasion of conflict between  well-known marks vis a vis previous Brazilian applications or infringing marks, used as a way to protect marks which are known in their field of activities but not yet registered in Brazil.

The Brazilian Trademark Law also brings provisions which hinder registration of any mark which reproduces or imitates a third party’s well known mark or a mark which applicant could not fail to have knowledge of prior to the filing, as a result of its activities. These provisions reinforce protection of well-known trademarks in Brazil, as provide the legitimate owner of the well-known mark means to cancel or successfully oppose bad faith trademark registrations and  applications.

Protection of Famous Marks in Brazil

While marks which are well-known in their field of activity have special protection without having a previous registration in Brazil, marks registered in Brazil and recognized as famous (or “highly renowned ”) enjoy unique protection against infringement in all fields of activities, according to item 125 of the Brazilian Intellectual Property Law.  

A mark shall be considered famous if brings “incontestable authority, of an unique knowledge and prestige, as a result of its market tradition and qualification, quality and trust which inspires, strictly related to the good reputation of its products or services, carrying a magnetism of extraordinary power of attraction over consumers, raising up from different fields of activities and transcending its primary function, being able to attract consumers by its single presence”.

This definition is contained in resolution 121/05 of the Brazilian Trademark Office, according to which recognition of the mark as famous must be sought within the framework of opposition and administrative nullity proceedings, upon payment of specific official fees.

The party requesting the recognition of high reputation must produce supporting evidence, including the evidentiary elements indicated in a non-exhaustive list indicated in the Resolution.
Suggested evidence includes:

1) Date of first use of the mark in Brazil;

2) Actual or potential consumers of the products or services identified by the mark;

3) Opinion surveys or market surveys demonstrating the share market of the mark;

4) Any surveys demonstrating prompt identification of the mark by standard consumers;

5) Fraction of consumers of different market segments who spontaneously and promptly recognizes the mark essentially due to its tradition and qualification in the market, identified by means of an opinion survey or market survey or by any other applicable means;

6) Channels of trade of the mark in Brazil and, occasionally, abroad;

7) Geographical amplitude of the effective commercialization of goods under the mark in Brazil and, occasionally, abroad;

8) Length of time during which the mark has been effectively used in the internal market and, occasionally, abroad;

9) Length of time during which the trademark has been effectively publicized in Brazil and, eventually, abroad;

10) Amounts invested by the owner in publicity/advertising of the trademark in the Brazilian media, in the last 3 (three) years;

11) Product sales volumes or service revenues in the last 3 (three) years;

12) Economic evaluation of the mark as booked in company’s assets.

Any further evidence of fame shall be accepted for demonstrating the fame of the mark, although the general understanding of the entity seems to reject the submission of worldwide trademark certificates for this purpose, as it may be considered simple proof of use worldwide rather than evidence of the mark’s reputation.

The high reputation status of the mark will be analyzed by a special commission and the party claiming special protection, or the counterpart, shall take an appeal to the President of the Brazilian PTO against the decision which recognizes or dismisses the claim for fame declaration.

Upon recognition of the mark as famous, the BPTO shall record this status in relation to the trademark registration, valid for a period of 5 years. During this term, the trademark owner will not be required to file any supporting evidence in new opposition or administrative nullity proceedings. All subsequent applications for infringing marks, in every field of activities, shall be dismissed with basis on famous mark protection.

Besides, once a mark is recognized as famous, the Patent and Trademark Office will also send an official notification to the Brazilian Registrar of Domain Names, authority responsible for the registration of domain names, to support the examination of applications for infringing domain names.

The recognition of high reputation may become void if the basic local registration for the famous mark expires for any reason.
Special Protection of Famous Marks at Courts

Any decision rendered by the BPTO, either recognizing or rejecting the special protection of famous marks, may be challenged at the Brazilian Courts. The owner of a famous mark shall also be entitled to claim the special protection afforded by law to famous marks within the scope of an infringement lawsuit.

These provisions have caused controversy among trademark specialists, some of whom argued that the recognition of fame could also be made through mere declaratory judgments in Court, rather than only incidentally within infringement and nullity lawsuits or opposition and cancellation procedures at the BPTO. Therefore, several trademark owners tried to obtain the fame declaration for their marks directly at Courts.

In August 2008, however, the Brazilian Federal Court of Appeals in Rio de Janeiro rendered a relevant decision to trademark owners regarding the famous status of the trademark ABSOLUT.  According to the Court, fame is a result of public appraisal and the recognition of this status should follow the statutory procedures established by the Brazilian Trademark Office’s resolution, rather than in abstract.  In other words, the Court found that the request for recognition of famous mark status shall not occur in the absence of actual or potential infringement of trademark rights.

It is worth mentioning that if a request for fame recognition is made incidentally, within an infringement action before State Courts, the effects of such recognition shall be enforceable only between the parties to the litigation. In order for a judicial declaration of fame to be enforceable against all third parties, and duly recorded by the BPTO, the request must, under most circumstances, be made incidentally before the Federal Courts, with intervention of the INPI as a party to the lawsuit.

Brand owners should, therefore, seek recognition of the status of their marks as famous in Brazil incidentally, within oppositions, nullity proceedings, or infringement proceedings, to achieve complete special protection.