Effectiveness of Protection for Well-known Trademarks

It is known that the Industrial Property Law, in its article 125, provides special protection for famous trademarks, defined by the Law as trademarks that, originally registered in Brazil in a particular business sector, have attained an exceptional level of notoriety to the point that the public in general throughout the country recognizes them even if they are used outside their normal commercial context and with no connection to the products or services they aim to identify.

In contrast to protection under the former legislation, which contemplated an abstract declaration with duration equal to that of a basic registration, the current legislation establishes an incidental declaration to be pursued by the interested party only in the framework of an opposition to an application filed by a third party.

A decision rendered by the Superior Court of Justice in re VISA1, however rules that to qualify for the extended protection of the subject provision the owner of the trademark claiming fame must first seek the recognition of fame at the Brazilian Patent and Trademark Office. On these grounds the Court upheld a decision that denied the appellant the right to prohibit use of the VISA trademark for an area of activity unrelated to the one it targets.

This understanding seems questionable given that (a) the Law does not contain this requirement, but only generically guarantees an enlarged protection to famous marks and (b) the Brazilian Patent and Trademark Office’s procedure for incidental recognition of fame, under Resolution 121/05, only applies in the event of an administrative dispute. If that high Court’s view prevails, in the absence of administrative opposition conducive to incidental declaration of fame for a company’s mark, it would not be able to preclude others from using a similar or identical trademark in an area other than the one it operates in.

This decision, as well as others handed down by the Courts in some Brazilian states, suggests that owners of clearly famous trademarks must be vigilant: practically speaking, to obtain the benefits of article 125, they should monitor possible applications by others for similar or identical trademarks, especially in unrelated classes, when may open the door to challenges with the related application for recognition of fame in the terms of Resolution 121/05.