by Ana Lúcia de Sousa Borda
February 15, 2015
Ana Lúcia de Sousa Borda
There have been great expectations since the enactment of Resolution No. 107/2013 on August 19, 2013 regarding the examination of trademarks with national reputation and recognition in Brazil.
The Brazilian Industrial Property Law (Law No. 9.279/96, of May 14, 1996) provides protection to highly renowned marks by virtue of its Article 125, which states that “marks registered in Brazil and deemed to be famous shall be afforded special protection, in all fields of activity.”
This provision requires additional rules as per Resolution No. 107/2013. The previous Resolution determined an incidental proceeding for highly renowned status, meaning that the interested party was in a position to request the highly renowned status only along with an opposition or an administrative nullity proceeding.
Resolution No. 107/2013 removed the need for such a proceeding. Now, the basic requirement is a trademark registration granted by Brazil’s National Institute of Industrial Property (INPI). INPI’s Resolution lists many examples of documents to be submitted, which are neither mandatory nor exhaustive.
The time limit to benefit from highly renowned status may now last up to 10 years; under the previous Resolution it lasted only five years.
On March 10, 2014, the Brazilian soccer club, Gremio Foot-Ball Porto Alegrense, filed a request for recognition of the highly renowned status of its mark (shown below).
The decision was published September 30, 2014, in the Official Gazette (No. 2282) and sheds light on what is expected as evidence of highly renowned status.
In INPI’s view, Gremio Foot-Ball Porto Alegrense’s device mark did not deserve special protection on the following grounds:
a. The documents submitted did not evidence that the mark was highly renowned all over the country.
b. The public in general was not familiar with the mark—only those individuals interested in soccer and living in Porto Alegre, Rio Grande do Sul;
c. As per a number of surveys, the mark was the most recognized in soccer-savvy areas—specifically, in the state of Rio Grande do Sul, not countrywide;
d. Sufficient evidence as to the image of the mark as a highly renowned one was missing. This requirement may be met by means of surveys, for instance.
e. The word “grêmio” means an association of individuals with recreational and instructive purposes and was, therefore, merely descriptive. Highly renowned status, if at all, would have encompassed the device portion “1903 GRÊMIO FBPA.”
The conclusion was that (i) the mark was not known among Brazilian consumers in general and (ii) awareness of the image of the mark among the public in general was not evidenced.
This decision provides insight into the criteria INPI deems as crucial to the outcome of requests for highly renowned status.