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Highly Renowned Marks – Criteria Adopted by the BPTO for their recognition

by Ana Lúcia de Sousa Borda

December 01, 2005

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In March of this year, we published an article reporting the initial decisions of the Brazilian Patent and Trademark Office (BPTO) recognizing the marks "Pirelli," "McDonalds," and "Hollywood" as highly renowned.

More recently, the BPTO recognized the marks "Visa," "Kibon," "Moça," "Aymoré," "3M," "Cica," "Natura," "Ninho," and "Fiat" as highly renowned This report summarizes the conclusions obtained from the analysis of the respective opinions.

The analysis of virtually all the opinions on which claims of high renown were based indicates they have a number of factors in common, as follows:

a) evidence was provided that the mark was in use and protected in Brazil for a considerable period of time. In the large majority of cases, the mark was found to be in use in Brazil for at least some decades;
b) the nature of the goods or services designated by the mark was a determining factor in ascertaining the scope of the target public. In all the cases analyzed, use of the goods or services by a broad range of the population was considered an important factor in establishing it as highly renowned;
c) consumers immediately and spontaneously connected the goods or services with the mark claiming high renown;
d) the geographic scale of commercialization of the goods or services is unquestionably a major factor in assessing its renown;
e) heavy investments in marketing and advertising in Brazil were considered. In specific situations, such as in the case of the marks "McDonald’s" and "Pirelli," the owners’ spending on marketing and advertising internationally was taken into consideration as well;
f) substantial sales volume was reported for the goods and services designated by the mark. This volume, geographic scale, and an extensive target public, as noted above, attest to deep penetration of the mark in the domestic market.

Another factor noted in some of the opinions was the mark’s high degree of distinction and singularity in relation to the goods or services covered. Although doctrine and previous court decisions value singularity, or the marks commercial identity, the fact is that marks initially lacking any considerable distinction may acquire distinctiveness as a result of their continued use.

Among the opinions analyzed, some stand out, namely those regarding the oppositions presented to the applications for trademarks "3EMES", "Aimoré," "Novo Ninho," and "Fyat-K" and the nullity request against the registration of trademark "VISA SEGURANÇA". Assessing these objections, the Special Commission approved them based solely on Article 125 of the Intellectual Property Law (LPI), recognizing as highly renowned, therefore, the marks "3M," "Aymoré," "Visa," "Ninho," and "Fiat."

Another opinion was grounded on the decision issued for two oppositions to the mark "Ki-Bona," the first based on the mark "Kibon" and the second based on, among others, registration for the mark "Q’boa." Both oppositions were partially accepted: the opposition anchored in the mark "Kibon" was supported by the renown of the sign, while "Q’boa," although not recognized as highly renowned, was considered an obstacle to the registration of "Ki-Bona."

In the large majority of cases analyzed, the Special Commission ruled that the marks in question were highly renowned, concluding that the fame and reputation established by the mark "make it economically attractive," and for this reason deserve higher protection, meaning special protection in all classes of goods and services.

Although the decisions addressed herein may still be challenged, the analysis of the opinions issued by the INPI reveals the criteria to have a mark recognized as highly renowned.


 

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Ana Lúcia de Sousa Borda

Partner, Lawyer, Industrial Property Agent

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