BPTO announces it will issue Highly Renowned Trademark Certificates

BPTO announces it will issue Highly Renowned Trademark Certificates

On November 5, through Industrial Property Magazine No. 2809, the Brazilian Patent and Trademark Office (BPTO) announced that, as of November 12, it will issue Highly Renowned Trademark Certificates for all trademarks with this protection recognized in accordance with the provisions of BPTO/PR Ordinance No. 08/2022, under the terms of article 125 of Law No. 9,279/1996, Industrial Property Law (IPL). According to the BPTO, the certificate will contain the trademark, the registration in which it was recognized, the date of recognition and the end date of its validity.

According to Article 125 of the IPL, trademarks registered in Brazil and considered to be highly renowned will be granted special protection in all branches of activity. Article 6 bis of the Paris Convention states that “the countries of the Union undertake to refuse or invalidate registration, either administratively, if the law of the country so permits, or at the request of any person having an interest therein, and to prohibit the use of a trademark which constitutes a reproduction, imitation or translation, likely to cause confusion, of a trademark which the competent authority of the country of registration or use considers to be notoriously known therein as already being the trademark of a person covered by this Convention, and used for identical or similar goods. The same shall apply where the essential part of the mark constitutes a reproduction of a well-known mark or an imitation likely to cause confusion therewith.”

In this sense, as stated in the BPTO’s Trademark Manual, the protection afforded to highly renowned trademarks is an exception to the principle of specialty, since they are protected in all market segments. It is also worth mentioning that in order to be protected, unlike in the case of well-known trademarks, the trademark must already be duly registered in Brazil. According to the definition adopted by BPTO/PR Ordinance No. 08/2022, “a highly renowned trademark is one whose performance in distinguishing the products or services it designates and whose symbolic effectiveness lead it to go beyond its original scope, thus excepting the so-called principle of specialty, due to its distinctiveness, its recognition by a large portion of the public, the quality, reputation and prestige associated with it and its flagrant ability to attract consumers by virtue of its mere presence”.

Also according to the Ordinance, in its article 64, in order to obtain the special protection granted to highly renowned trademarks, the owner of a trademark registered in Brazil must apply to the BPTO for recognition of the alleged highly renowned status, by means of a specific application, accompanied by evidence in Portuguese.

In its new notice, the BPTO pointed out that certificates of high renown will be available in the trademark search system of the BPTO Portal through login access, in the same way that Trademark Registration certificates are available. It also states that after the certificate has been issued, there will be an icon for downloading the PDF file in the “Certificate” field of the table with the publication history, on the line corresponding to the granted application for recognition of high renown.

The official BPTO press release can be accessed via the link: Revista da Propriedade Industrial nº 2809

Note: For quick release, this English version is provided by automated translation without human review.