by Rodrigo Borges Carneiro
March 09, 2005
The Brazilian Patent and Trademark Office (PTO) has issued its first rulings based on Resolution 110/2004, which regulates the procedure for recognition of highly reputed trademarks.
Highly reputed trademarks enjoy special protection against use by third parties in any field of activity pursuant to Section 125 of the Brazilian Industrial Property Law 9279/96. Also, the infringement of a trademark recognized as being of high repute is punishable by higher criminal penalties.
Although the Industrial Property Law was enacted in 1996, the procedure for recognition of highly reputed trademarks only became fully regulated following the implementation of Resolution 110 issued on January 27 2004. The resolution prescribes (i) that an application for recognition of the high reputation of a mark should be brought during opposition or administrative cancellation proceedings, and (ii) the necessary evidence to support the application.
The PTO has now issued three rulings based on the resolution.
In the first decision, the PTO recognized Souza Cruz SA’s HOLLYWOOD mark as a highly reputed trademark for cigarettes during its opposition to an application filed by Atacado Hollywood Ltda to register HOLLYWOOD for clothing in national Class 25 (Application 817437657, published in the Industrial Property Journal of December 21 2004).
In the second case, the PTO recognized MCDONALD’S (and design) as a mark of high reputation in connection with McDonald’s Corporation’s opposition to an application to register M MR DOG (and design) for food for animals in national Class 21 filed by Mr Dog Alimentos Congelados para cães Ltda (Application 819.540.927, published in the Industrial Property Journal of January 11 2005).
Finally, the PTO recognized PIRELLI (and design) as highly reputed during Pirelli SpA’s opposition to Pirel Comércio e Instalações Elétricas Ltda’s application to register PIREL (and design) in national Class 09 for electrical elements (Application 820.970.298, published in the Industrial Property Journal of January 11 2005).
The applicants in each of the above cases have the right to appeal.