Protection of well-known trademarks in Brazil
The Brazilian Law grants to trademarks identified as well-known an extended protection, which, however, is rarely invoked. In fact, the Brazilian law ensures owners of trademarks deemed well-known extended protection covering all fields of activity, i.e., all trademark classes. In practical terms, this means that even when a trademark is registered in a single class, if such trademark is well-known recognized, no identical or similar trademark can be registered in Brazil in any other class.
According to the Brazilian Patent and Trademark Office (known by the Portuguese acronym “INPI”), well-known trademarks are defined as those which benefit from unquestionable authority and a high degree of recognition and prestige because of the tradition and status they enjoy in the market and the quality and confidence they represent, which are essentially related to the good image of the products or services they refer to, exerting a powerful magnetism and an attractive power on the general public like no other.
As subjective as it may be, INPI’s definition of “well-known trademarks” covers no more than 50 marks in Brazil today. This is largely due to the specificity of the procedure required to apply for its recognition. An application for a special protection of a well-known trademark must be submitted when opposing to an application for a third-party trademark registration that violates the well-known trademark or when filing an administrative proceeding for annulment of a third-party trademark based on the existence of a well-known trademark.
The application is submitted to INPI and reviewed based on the information provided by the applicant, such as the date when the trademark was first used, the characteristics of the trademark users, the geographical scope of use of the trademark in Brazil and, in some cases, abroad, as well as the product sales or service income over the past three years, the economic value of the trademark as a company asset, among others.
A few examples of well-known trademarks in Brazil are: 3M, Aymoré, Itapemirim, Chica-bon, Coral and Derby.
Being granted the status of ‘well-known’ is an extremely effective way to ensure protection of a trademark. Companies should make better use of this instrument to avoid registration of identical or similar marks in different classes.
For more information, please contact Milena Tesser at Rayes, Fagundes & Oliveira Ramos Advogados Associados.
Article Date: 2nd March 2010
Bookmark Using:
