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Changes in treatment of highly renowned marks in Brazil

Ana Carolina Lee Barbosa
Diego Perandin

On September 6, 2005, the Brazilian Patent and Trademark Office (BPTO) issued Resolution No. 121/05. This Resolution regulates Article 125 of Law No. 9,279/96 (Industrial Property Law - IPL), which addresses highly renowned marks, and revokes Resolution No. 110 of January 27, 2004.

The new Resolution presented few changes if compared with the previous one, although the following modifications are worth noting:

a) In Article 2, the BPTO defined highly renowned marks and the parameters to be considered for analysis, such as: (i) the mark's history; (ii) the image of the goods and services represented by its represents; and (iii) the sign's attractiveness to the general public, which consequently extends to different market segments.

Note that the BPTO had previously elaborated the above-mentioned definition in its Resolution INPI/PROC/DICONS No. 54/2002, as an attempt to characterize highly renowned marks that was grounded in Brazil's doctrine and based on the content of the Association Internationale pour la Protecion de la Proprieté Intellectuelle (AIPPI) regarding the matter.

Although this attempt to define highly renowned marks was valid, since it specified some of the characteristics inherent to them, explanation of these factors was still insufficient to curb the subjectivity surrounding the issue.

b) A requirement was included providing for invocation of the special protection conferred by IPL Article 125, upon filing of opposition or administrative nullity proceedings, presupposing conflict between the marks owned by the parties involved.

This requirement is unquestionably designed to prevent the filing of ungrounded opposition or administrative nullity proceedings submitted only for the purpose of securing the BPTO's pronouncement of highly renowned status for the marks.

c) Analysis of a given mark's renown now occurs upon examination of filed opposition or administrative nullity proceedings filed, and no longer before the analysis of the merit of these incidents as under the previous Resolution.

d) A few inaccuracies of the former Resolution were corrected as it did not address the possibility of challenge to the special protection sought by the interested party, also in the response to the opposition.

e) Alterations were made regarding the composition of the Special Commission responsible for analyzing the request for recognition of a given mark's highly renowned status. Formerly, the group included 3 sitting members and 2 alternates. Note that now this Commission is chaired by the BPTO's current Director of Trademarks and is composed of 3 sitting members and 3 alternates, pursuant to BPTO's Ordinance Order No. 314/2005 issued by the Institute on the same date as the Resolution under review.

f) Article 10, Paragraph 1, complemented the terms of Article 14, Paragraph 1, of the previous Resolution, establishing that subsequent to payment of a determined retribution in the period of protection of the highly renowned status (5 years), the mark owner will not be subject to any other fee for its maintenance, unless the BPTO requires additional documentation to this end.

Despite the changes noted above, the new Resolution, like its predecessor, did not address possible autonomous request of recognition of a mark's renown.

In view of this, the recognition of the request that the BPTO recognize a mark's highly renowned status is still only possible upon the filing of opposition or administrative nullity proceedings before the BPTO.

It may therefore be concluded that, despite changes to its form and content, regulation governing the matter in question does not address all the concerns of highly renowned marks for complete application Article 125 of the IPL.

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