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Highly Renowned Marks-Application of Article 125 following Introduction of Resolution No. 110/04 Publicado em Latin American Law & Business Report, em

by Ana Lúcia de Sousa Borda

November 22, 2006

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Industrial Property Law (IPL) No. 9,279/96 (in effect since May, 1997), establishes in Section 125 that marks that are registered in Brazil and considered as highly renowned shall be given special protection. The procedure for recognition of the status of highly renowned marks was established by Resolution No. 110/ 04 of the Brazilian Patent and Trademark Office (BPTO). According to Resolution 110, highly renowned marks shall only be declared incidentally, that is, in the context of opposition or administrative nullity proceedings. The highly renowned status remains in effect for five years.

Revocation of Resolution No. 110/04 by Resolution No. 121/05

On December 13, 2005, the BPTO published Resolution No. 121/05, which superseded Resolution No. 110/04. Among the changes, Resolution No. 121/05 clearly establishes the marks that can be considered highly renowned: those that present ”distinct recognition and prestige as a result of their tradition and distinction on the market, as well as the quality and confidence associated with them …” The list of documents and information that may be presented to support claims of highly renowned marks remained unchanged. Under the new Resolution, an interested party may also submit proof of non recognition of the status of highly renowned when replying to the opposition. Under the previous Resolution, highly renowned marks could be challenged only by an appeal against the refusal triggered by the recognition of highly renowned marks or by a reply to the request for administrative nullity.

Brief Comparison of Current System with the Former

A thorough analysis of the current rules calls for a review of the criteria adopted by the former legislation, Industrial Property Code (IPC) Law No. 5,772/71. Under the IPC, a mark registered in Brazil and considered well known was guaranteed special protection in all classes, maintaining its own registration to prevent reproductions or imitations, provided that confusion could arise regarding the origin of the goods or services, or that the mark’s reputation could be compromised.

However, once a mark was established as well known, the interested party was obliged to apply for renewal of the registration every ten years by paying an additional fee and presenting updated evidence. The status was indissolubly linked to the existence of an autonomous registration, meaning a registration of the mark in the class of goods or services in which its renown, or widespread public recognition, had been established.

The differences between the two systems are the following:

  • Under the IPC, claims of highly renowned status were dependent upon the existence of a possibility of confusion as to the origin of the goods or services, or upon evidence of disparagement to the reputation of the mark. In contrast, the IPL does not stipulate this condition Notwithstanding, Resolution No. 121/05 represents a change from Resolution No. 110/ 04 by stating that the challenged mark must be in conflict with the mark for which highly renowned status is being claimed;

 

  • Under the IPC, the declaration of highly renowned status resulted from an application for recognition of such status by the owner of the mark. In contrast, the IPL establishes that the highly renowned status shall only be claimed incidentally, that is, when an opposition or a request for administrative nullification is filed.
Analysis of Some of the Decisions that Recognized Highly Renowned Status

The decisions analyzed here were handed down at the time Resolution No. 110/04 prevailed. As we have seen, the passing of Resolution No. 121/05 did not bring significant changes.

To date, the BPTO has recognized the highly renowned status of the marks ”McDonald’s,” ”Hollywood,” ”Pirelli,” ”Visa,” ”Fiat,” ”3M,” ”Ninho,” ”Moça,” ”Aimoré,” ”Kibon,” ”Cica,” and ”Natura.”

Other decisions granted well known status to the marks ”VISA,” ”3M,” ”AYMORÉ,” ”NINHO,” and ”FIAT.” Their status alone resulted in the cancellation of the registration of the mark ”VISA SEGURANÇA” and the denial of requests filed for registration of the marks ”3EMES,” ”AIMORÉ,” ”NOVO NINHO,” and ”FYAT-K.”

The decision issued in connection with application No. 820771317 for trademark ”FYAT-K” in class 05 (pharmaceutical preparations), may be considered a landmark. After removing the application of the Paris Convention, namely Articles 6 bis, 8, and 10 bis, as well as other provisions of the IPL, the Special Commission denied the mark in question based solely on IPL Article 125. In other words, having analyzed and concluded- in light of the evidence submitted-that special protection, meaning the well known status, of the mark ”FIAT” is warranted, the mark was considered an impediment to registration of the mark ”FYAT-K.” When issuing its opinion, the Special Commission also examined other grounds, such as conflicting marks, conflict with the denomination ”FIAT” as a characteristic element of a trade name, unfair competition etc.

From the analysis of the opinion issued by the Special Commission, one may also infer that the Commission is concerned about avoiding dilution of a previous mark and undue association.

The inevitable conclusion is that once the highly renowned status of a mark has been thoroughly demonstrated, it may serve to prevent the registration of identical or similar marks, even with ”no evident competition,” as the Special Commission underscored at the time it recognized as highly renowned the mark ”FIAT,” at the same time it denied the request for registration of the mark ”FYAT-K” to designate ”pharmaceutical preparations.” Thus, it is even more difficult for dishonest petitioners to usurp a well known mark, whether through imitation or reproduction, by arguing that the respective goods and services bear no similarity or resemblance.

Main Forms of Evidence to Prove Highly Renowned Status

In general, highly renowned status is granted based on evidence considered decisive in the diverse opinions analyzed, such as the following:

  • immediate and spontaneous association by LATIN AMERICAN LAW & BUSINESS REPORT January 31, 2006 consumers of the goods or services with the mark claiming highly renowned status;

 

  • use of the goods or services by a broad range of the population, which makes the geographical scale of commercialization an important factor;

 

  • protection and use of the mark in Brazil for a considerable period of time. In the large majority of cases, the mark was proven to be in use in Brazil for a number of decades.
Criticism of the BPTO Resolution

Even though BPTO Resolution No. 110/04 plays an important role in standardizing procedures for determining a mark’s renowned status, it has been criticized. The main objection is that it does not contemplate autonomous recognition, that is, recognition based on the actual registration of the mark for which special protection is granted; rather, it considers only incidental recognition. The compilation of criticism and proposals for changing the provisions in Resolution No. 110/04 is contained in the Resolution of the Brazilian Intellectual Property Association (ABPI), No. 60, submitted to the Presidency and Board of Directors of the BPTO on October 28, 2004. Rulings based on the content of Resolution No. 121/05 have not taken into consideration proposals contained in the ABPI Resolution.

Advantages of Securing Highly Renowned Status

Once a mark is recognized as highly renowned, the BPTO will record it on its files and will also inform the agency responsible for registering domain names in Brazil.

Not only is value added to the mark by virtue of the special protection it is guaranteed, Resolution No. 001/98 of the Brazilian Internet Steering Committee establishes that well known status prevents third parties from obtaining domain names ”in the case of names that represent well known marks.” Finally, the IPL establishes that penalties applying to the crime of trademark violation will be increased between onethird and one-half in case of unauthorized change, reproduction or imitation of a mark enjoying highly renowned status.

Conclusion

Despite the objections raised against it, Resolution No. 110/05 was recently superseded by Resolution No. 121/05, which has similar content, set parameters for those interested in claiming highly renowned status for their mark in Brazil. Furthermore, an analysis of opinions issued thus far supports the conclusion that the Special Commission has been making clear and careful decisions, and everything indicates it will consolidate valuable decisions regarding this matter. 

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Ana Lúcia de Sousa Borda

Partner, Lawyer, Industrial Property Agent

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