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Special registration as notorious trademark requires proof of widespread reputation in the market

Rodrigo Borges Carneiro

In a trial occurred on July 27, the First Specialized Panel of the Federal Court of Appeal for the 2nd Region decided, in an unanimous decision, to uphold a lower court's decision to deny the special registration as a notorious trademark for the name Votorantin.

The court understood that in order to obtain the special registration as a notorious trademark it was necessary to prove that the reputation of the trademark reaches beyond the market segment in which it is inserted. The decision can still be appealed.

The special registration as a notorious trademark was regulated by the old Industrial Property Code (Law 5772/71) and assured special protection in all segments of activity for the trademark registered as notorious by the BPTO. The special protection of a notorious trademark represents a legal exception to the general trademark principle which limits protection of a trademark to the branches of activities that are identical or related to those covered by the registration.

The special registration as a notorious trademark was extinguished by the current Industrial Property Law, nº 9279/96, which, in its place, created the institute of the highly-reputed trademark, with special protection in all fields of activity, as did the notorious trademark, but without the special registration. Now, the recognition of the high reputation of a mark must be sought in the framework of an opposition or administrative nullity proceeding and once obtained is entered on the records of the mark being valid for five years and subject to payment of specific official fees.

On the other hand, well-known trademarks represent an exception to the principle of territoriality and are protected in Brazil independent of local registration, based on Article 6 bis of the Paris Union Convention and, currently, by Article 126 of the Industrial Property Law 9279/96. Different than a highly-reputed mark, a well-known trademark is not protected outside of its area of activity.

Founded in 1918, and undeniably known in the field of civil construction, the company S/A Indústrias Votorantim sought, unsuccessfully, to obtain the special registration as a notorious mark before the Brazilian Patent and Trademark Office (BPTO) under the old Industrial Property Code (Law 5772/71).

Against the final refusal of its request by the BPTO, the company filed a lawsuit in federal court. It sustained that the trademark has been used for a number of decades and is famous among professionals who work in the construction, architecture, landscaping and decoration industries. The firm annexed documents to the case proving the widespread sales of products under the Votorantim mark.

The lower court confirmed the denial of the special registration by the BPTO, with the understanding that the examination of the notorious status of a given trademark must take into account not only the consumer of the segment of activity in which it is inserted but the general public. While the court recognized that the trademark Votorantim enjoys a reputation in its segment of activity, deserving protection as a well-known trademark, the court accepted the position of the BPTO that there was no proof that Votorantim's reputation went beyond its field of activity.

In its hearing of the appeal, the First Specialized Panel of the Federal Court of Appeal for the 2nd Region decided unanimously to uphold the earlier decision. Federal Judge Márcia Helena Nunes, who wrote the opinion, also understood that there was no evidence on the dockets of the case that the trademark Votorantim was attractive for consumers in general not related to the construction business.

Although the decision in the Votorantim case was made in a lawsuit referring to the special registration as a notorious trademark which was extinguished by Law 9279/96, the basis for the decision can be applied in relation to requests for the incidental declaration of highly-reputed trademarks encompassed by the current law, in which the protection also extends to all segments of activity.

Thus, when seeking the incidental recognition of the status of highly-reputed for a mark before the BPTO, the owner must pay attention to the need to present evidence that the reputation of the trademark goes beyond the market segment in which it is inserted.

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