Por Dra. Soraya Imbassahy de Mello e Dr. Marcello do Nascimento

If your trademark has already been given the feature of unquestionable reputation in Brazil, it will have special protection in any social class.

The “Highly Renowned Institute”, states that “the trademark in Brazil deemed to be highly renowned shall be afforded special protection, in all fields of activity”, without mentioning the existence of a separate or special registration to characterize this special feature of the trademark.

Thus, the trademark owner with public recognition and prestige, as a consequence of the quality and prestige of the product or service that distinguishes him, could not plead as it could formerly, the registration of special protection, for lack of regulation of the administrative process for such recognition.

Therefore, the only option left was to file a lawsuit in order to obtain recognition of high renowned status
by the Judicial Branch under threat to his right by a third party.

After a long period of silence on the matter, the INPI [Brazil’s National Institute of Industrial Property] determined the procedure for recognizing the highly renowned trademark under the provisions of Article 125 of the Industrial Property Law in force. However, it also limited the analysis of the highly renowned status exclusively through incidental petition, i.e., the trademark owner with the aim to obtain such recognition could only do so when the third party filed the application for trademark registration likely to conflict with his, by opposing the submission of the application, or when administrative nullity proceedings of registration granted in violation of the law were required.

There was still a significant gap in this procedure, which bothered immediately, since it was required, first of all, according to the rule to apply for the highly renowned statement before the INPI, a conflict of trademarks that could take a long time to appear or never appear.

The “pirate” usually does not request trademark applications with the INPI, which made it difficult to formalize the conflict with the agency and therefore plead its special protection.
In order to improve the discipline, The INPI emphasized that the highly renowned status is recognized once the unquestionable prestige and knowledge of the cited highly renowned trademark are proven, and by establishing that the evidences applicable to verification were voluntarily presented as a complement, since such presentation used to be compulsory at the moment of opposition or administrative nullity proceedings.

In the event of a conflict, the applicant of the special protection should submit to INPI, incidentally at
the moment of opposition or administrative nullity proceedings, the evidences applicable to the verification
of the highly renowned status of the trademark, following a long list of evidences. This new procedure has
facilitated in the sense that the evidences could be introduced any time in the application for recognition of the highly renowned status.

The annotation term of the trademark highly renowned status was set forth until then within five (5) years.

The advances were slow, and only now, after many pleas by the owners of highly renowned trademarks, the INPI has finally revoked the procedures limited incidentally, through Resolution No. 107 of 08.19.2013,allowing the owners of highly renowned trademarks to request the INPI their recognition by means of a specific and autonomous petition, at any time during the registration term.

From now on, the recognition procedure of highly renowned status is no longer required to be bound to any procedural implications, i.e., Opposition or Administrative Nullity Proceedings.
There is still a need to evidence, through extensive documentation, the situation of the highly renowned status of the trademark throughout the country, demonstrating the quality, reputation and prestige, by a large portion of the general public.

It is recommended that the evidence of recognition by a large portion of the public be mainly through market surveys, notwithstanding other evidences.
With regard to the evidence of quality, reputation and prestige with the public, it is required to be carried out through the brand image survey with national coverage, subject to the submission of other documents able to demonstrate such image in the country.

If recognized by the INPI, the annotation of the highly renowned status will be in force for ten (10) years and no longer for five (5) years. For those who are still waiting for the examination of applications for recognition of the highly renowned status, there will be rules to adapt to the new model.

During the term of that annotation, the owner of the highly renowned trademark will be exempted from submitting further evidence of such condition in the possible complaints of granting processes of trademark rights, except in cases where the INPI deems necessary to determine the production of new evidence.

The recognition of the highly renowned status of the trademark or the lack of such condition
will encourage the INPI to communicate the agency(ies) or entity (ies) responsible for the registration of
domain names in Brazil in an effort to prevent counterfeiting of trademarks as domain names.

It is worth mentioning that the new Resolution No. 107/2013 has not entered into force yet given that it depends on the publication of the INPI Compensation Table, providing the value and code of official fees related to the services involving the examination of the highly renowned status.

Finally, in order for the INPI to recognize the highly renowned status, it takes into account the fact that the trademark has been used for many years in Brazil; that the trademark characterizes products/ services that are widely used by the population; characterizes products/ services that are immediately and spontaneously identified by the trademark; that the marketing of the product or service reaches a wide geographic area of domestic and foreign markets; that there is a wide dissemination of the trademark in Brazil and abroad; that there is a considerable investment in advertising; that the trademark has great economic value of the company´s asset; that the degree of uniqueness of the trademark is unequivocal, even in comparison with the products / services that it characterizes; the degree of exclusivity that the trademark has currently in the market compared to others registered in Brazil for products / services in general of different origin.
And most importantly, the trademark recognized with the highly renowned status becomes more attractive economically.

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