Brazil announces new measures to obtain highly regarded trademark status

Brazil is set to introduce new measures designed to simplify the procedure for obtaining recognition for famous and well-known trademarks.

As part of the new resolution, it will be possible to independently file a request for highly reputed trademark status without having to base it on proceedings against applications for allegedly infringing marks.

The plans were published by the Brazilian Patent and Trademark Office (INPI), under the name Resolution No. 107/2013, on August 20.

According to Carolina Barbosa Del Bianco, partner at Dannemann Siemsen in Sao Paolo, the resolution should be seen as “a welcome change.”

She told WIPR: “Under the practice so far adopted by the INPI, the recognition of high renowned status of a trademark has only been possible in the realm of oppositions or administrative proceedings against applications or registrations for allegedly conflicting marks.

“The owners of eligible marks therefore had to await the publication of any such applications or registrations. Resolution 107/13 now entirely changes this practice, introducing an autonomous declaration of high reputation irrespective of the existence of concrete cases of conflicts.”

The resolution claims it is protecting trademark owners by “providing protection to highly reputed marks against third parties’ attempts to obtain registration for marks that imitate or reproduce, even if the goods or services are not related.”

It adds that a trademark is considered highly reputed when its “performance in distinguishing the goods or services designated by it and symbolic efficacy leads it to extrapolate its original niche, exceeding the so-called principle of specialty.”

The resolution will also double the time period in which the status of a reputable mark is applicable, from the current five years to 10.

The resolution will enter into force in the next few months once the fees for the service are fixed.

Trademark owners who had previously filed requests prior to the enforcement of the new resolution and are waiting for analysis, will be required to submit a document confirming their interest remains.