Volume 6, Number 17, Page 2
Treatment of Famous Trademarks in Brazil
The current Brazilian Industrial Property Law grants protection to so-called famous trademarks (Law 9279, dated May 14, 1996, entered into force May 15, 1997 (“IPL”)). Unfortunately, the law fails to define the term, famous trademark. Instead, the IPL refers to highly-reputed and well-known trademarks, affording such trademarks certain priorities and protections.
Highly Reputed Trademarks
Article 125 of the IPL provides “special protection in all fields of activity” to highly reputed trademarks registered in Brazil. These trademarks have achieved a high degree of consumer recognition in association with specific goods or services, enjoy a certain reputation for quality or excellence, and are generally known by the public. As such, highly reputed trademarks are subject to frequent infringement or piracy attempts.
The IPL does not specify the criteria to determine whether a particular trademark qualifies as highly reputed. The Brazilian Patent and Trademark Office, known by the Portuguese acronym “INPI”, has attempted to address the issue by drafting a Normative Act currently pending approval by the legislature. To qualify for Article 125 protection, the draft act requires trademark owners to apply for a “declaration of high reputation” to be issued by the INPI. It places on the owner the burden of proving the trademark’s reputation and degree of public recognition.
Again, however, the proposed legislation does not list the criteria to be considered by the INPI in evaluating an application. The act merely prescribes certain information the owner must include on the application, without providing specific guiding benchmarks. Such information includes: 1) the asset value of the trademark; 2) a list of countries or territories in which the trademark is registered; 3) a list of companies using the trademarks in the aforementioned countries/territories, together with the market share such companies enjoy; and 4) with respect to Brazil, an estimate of the number of consumers who purchase products bearing the trademark and the level of consumer recognition the trademark commands. In the past, market surveys conducted by Brazilian entities have been accepted by the INPI and the courts as evidence that a trademark is highly reputed. It is expected that such reports shall continue to be an indicator of trademark recognition in the domestic market. In addition to the foregoing required information, the owner may submit any information he considers will assist the INPI in evaluating the application for a declaration of high reputation. Since the INPI has extensive discretion, the application should be exhaustive.
Once the declaration is issued, the trademark in question enjoys the broad protections provided by Article 125 of the IPL. In general, the IPL grants ownership and exclusive use in the national territory to trademarks registered in Brazil. Such protection, however, tends to be limited to specific classes of services or products. For highly reputed trademarks, Article 125 expands protection to include all classes of services, products or economic activities. The INPI should reject automatically any application to register a trademark similar to one that has been accorded highly reputed status or that was specially registered as a “notorious” trademark under the former intellectual property law. In the event such competing application is granted, the owner of the registered highly reputed trademark can invoke every available administrative or judicial remedy to block or prosecute use of the infringing trademark. Historically, the Brazilian courts have effectively protected the rights of the owners of highly reputed trademarks, either under the IPL, the former intellectual property law or the Paris Union Convention for the Protection of Industrial Property (“Paris Convention”), regardless of whether the trademark in question was registered in Brazil. Finally, it is also noteworthy that trademark infringement and unfair competition constitute crimes in Brazil, and Brazilian customs have the authority to confiscate counterfeit or infringing products.
Well-Known Trademarks
Article 126 of the IPL provides special protections to trademarks that are “well-known in its field of activity, pursuant to Article 6-bis” of the Paris Convention. The law does not specify the criteria to be used to assess whether a trademark is well-known. In light of Article 126’s reference to the Paris Convention, the INPI and the courts have sought guidance from Article 16(2) of the decree that published in Brazil the Trade Related Aspects of Intellectual Property Rights (TRIPs) Agreement (Decree No. 1355/94), which article provides that “to determine if a trademark is well-known, the Member countries shall consider the public knowledge about the trademark in its field of activity, including the knowledge resulting from trademark promotion in the respective Member country.” There is no particular information that must be submitted to the administrative or judicial authorities to establish that a trademark is well-known. However, the domestic market surveys discussed in the foregoing section have been successfully introduced as evidence of the recognition enjoyed by the trademark in question in Brazil.
The IPL protects well-known trademarks regardless of whether they are registered in Brazil or whether a registration application has been submitted. Consequently, the INPI or the courts are often required to determine whether a particular trademark is well-known during an infringement procedure.
Once the owner establishes that the trademark is well-known, Article 126 affords the owner trademark protection only for specific products, services or economic activities. It is possible to expand such protection if the conflicting or infringing trademark is connected to a related product, service or activity and if use of such conflicting trademark may result in confusion or association with the well-known trademark. (IPL, Article 124(XXIII).)
As in the case of highly reputed trademarks, the courts have consistently protected and enforced the rights of owners of well-known trademarks, including granting the broader protections afforded by Article 124(XXIII).
Strategies to Obtain Trademark Protection in Brazil
Certain strategies are available to protect trademarks in Brazil. The first option is to register the trademark with the INPI. Registration typically takes two (2) years. Prior use of the trademark in Brazil is not required. Continually using and advertising the trademark is critical. More important, however, is to conduct routine investigations to assure that the trademark is not being infringed and that no similar or confusing trademark has been registered.
An attorney specializing in intellectual property in Brazil can be retained in relation with any of the above.
Law 9279 can be found in its entirety on the InterAmSMDatabase in English and Portuguese.
Juliana L.B. Viegas and Claudia Possi Lopes are attorneys with Baker&McKenzie in Sao Paulo Brazil. Juliana L.B. Viegas can be reached at Tel: (55-11) 3048-6800; e-mail: juliana.viegas@bakernet.com
