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Guidelines for Protection of Highly Reputed Marks

by José Antonio B. L. Faria Correa

June 01, 2004

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Marks registered in Brazil and recognized as highly reputed enjoy expanded protection against use and registration for any goods or services under Section 125 of the Brazilian Industrial Property Law, according to Resolution 110/2004 ("the Resolution"), published January 27, 2004.

This expanded protection affects infringement cases with an increase in criminal penalties if the mark infringed is considered of high repute. To qualify for such protection, a mark must be officially recognized as being highly reputed. The Brazilian Patent and Trademark Office recently issued guidelines on how such official recognition is obtained.

Under the Resolution, recognition of a mark’s high reputation must be sought in the framework of opposition and administrative nullity proceedings, either by the opponent/complainant or by the party against whom the opposition or administrative nullity proceedings have been instituted.

The party requesting the recognition of high reputation must produce supporting evidence, including the evidentiary elements indicated in a non-exhaustive list indicated in Article 6 of the Resolution. Elements listed include a survey regarding the mark’s notoriety and information on sales and advertising expenditures.

To avoid the need for the owner of a Brazilian-registered mark of high reputation to re-file the supporting evidence in subsequent opposition or administrative nullity proceedings, the recognition of high reputation established in a given proceeding will be entered in the records of the registration serving as a basis for the claim of high reputation, and will be valid for a five-year term, subject to payment of specific official fees.

During this term, the trademark owner will not be required to file any supporting evidence in new opposition or administrative nullity proceedings. However, the notice of high reputation will automatically become void if the basic local registration in which it is entered expires for any reason. Every time a mark is recognized as highly reputed, the Patent and Trademark Office will send an official notification to the Internet Managing Committee, which is the authority responsible for the registration of domain names, to aid in the examination of applications for domain names that may include the mark.

The rules concerned will automatically apply to pending opposition and administrative nullity proceedings.

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José Antonio B. L. Faria Correa

Advogado, Agente da Propriedade Industrial

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