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Comments on the Decision to Recognize “Volkswagen” as a Highly Renowned Mark

by Ana Lúcia de Sousa Borda

September 01, 2007

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Before analyzing the decision that established the high renown of the "VOLKSWAGEN" mark, let us consider previous and current legislation, as well as procedures for claiming high renown status with the Brazilian Patent and Trademark Office (BPTO).

Adopting different criteria than the previous legislation (IPC – Law No. 5772/71), Industrial Property Law No. 9,279/96, in effect since 05/15/1997, provides for incidental recognition of high renown. This means that recognition may only be claimed in cases where the owner of the potentially highly renowned mark challenges an application by a third party in opposition or a registration in administrative nullity proceedings. Note that recognition of high renown is valid for a period of five years.

Under the previous system, the BPTO granted autonomous recognition, or notoriety (terminology used in the aforementioned IPC), for the mark itself independent of opposition or nullity filings.

Current legislation has been criticized for not considering autonomous recognition, thereby leaving out companies that, although they own marks that meet high renown criteria, are impeded from acquiring it. Claiming high renown in the terms of current legislation presupposes an opportunity for doing so, meaning an application or the registration of a similar or identical mark. In these cases, lawmakers could have considered autonomous recognition, adopting in this case valid criteria for incidental recognition, including therein the recognition period, which, as noted above, is five years.

Under Article 125 of Law No. 9,279/96, "marks registered in Brazil shall be guaranteed special protection in all classes of activity." In effect since 12/13/2005, Resolution No. 121 is the instrument that regulates application of Article 125 for verification and, where warranted, recognition of high renown.

In the decision addressed herein, the BPTO recognized as highly renowned the "VOLKSWAGEN" mark in the context of the opposition proceeding filed by VOLKSWAGEN AG against Application No. 820050113 for the mark "O SEU CONCESSIONÁRIO VOLKSWAGEN DOS JARDINS" to identify, among other things, "machines, vehicles and their parts."

Consistent with Resolution No. 121, the interested party must submit a comprehensive set of evidence to the BPTO that will provide the Special Commission responsible for analyzing applications for high renown the grounds for its decision, whatever it may be.

Adopting the criteria and conclusions in the cited Resolution No. 121, the BPTO denied the application for the mark "O SEU CONCESSIONÁRIO VOLKSWAGEN DOS JARDINS" at the same time it recognized the high renown of the "VOLKSWAGEN" mark. In its very well grounded opinion, it notes that the BPTO took into consideration the tradition, the geographical range where the "VOLKSWAGEN" mark is used (throughout the entire country), the fact that its products are "consumed in large commercial scale," the products’ high quality, the mark’s economic value, its worldwide advertising, the availability of products in the domestic and international markets, its position in the world ranking of most valuable marks etc.

Even though recognition of the mark’s high renown status was requested for Brazil, the mark’s presence in other markets and international advertising are important supporting factors in the decision. It couldn’t be any other way, given globalization of the economy.

Since the applicant for the mark "O SEU CONCESSIONÁRIO VOLKSWAGEN DOS JARDINS" did not file an appeal, the respective application was definitively removed from the official records, and with this the BPTO’s appropriate decision became final.

For those who have not had the opportunity to file for recognition of their marks’ highly renowned status – in incidental and, therefore, more limited circumstances, as provided by law, and not abstract – this is a legal void that, if filled, would permit a considerable increase in the number of decisions recognizing highly renowned marks, strengthening their value and guaranteeing their owners more solid protection.

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Ana Lúcia de Sousa Borda

Partner, Lawyer, Industrial Property Agent

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