World Trademark Law Report 31-03-2006

The Brazilian Patent and Trademark Office (BPTO) has issued a new resolution on highly renowned marks – a status provided under Article 125 of the Industrial Property Law pursuant to which marks are given a special level of protection. Resolution 121/2005 revokes Resolution 110/2004 and introduces the following changes: Article 2 defines the parameters to be considered when assessing whether marks are highly renowned, such as:

• the marks’ history;
• the reputation of the goods and services to which they apply; and
• the signs’ attractiveness to the general public.

This will help remove some of the subjectivity inherent to the assessment of such marks. The BPTO had previously defined ‘highly renowned marks’ in Resolution 54/2002, taking into account Brazilian doctrine and the comments of the Association Internationale pour la Protection de la Proprieté Intellectuelle on the matter, but the factors considered in the definition were held to be insufficiently objective.

• The resolution introduces the requirement that there must be a genuine conflict between the marks at issue in opposition and nullity proceedings. This is designed to prevent the filing of opposition or nullity proceedings for the sole purpose of obtaining the status of highly renowned mark from the BPTO.The analysis of a given mark’s renown now occurs upon examination of an opposition or administrative nullity action, and no longer takes place before the analysis of the merits of the action, as was the case under Resolution 110/2004.

• The new resolution now provides the possibility to challenge an application to receive highly renowned mark status in response to an opposition action.

• Alterations were made to the composition of the Special Commission responsible for analyzing requests for recognition of a mark’s highly renowned status. Formerly, the commission comprised three sitting members and two substitutes. The commission is now chaired by the BPTO’s director of trademarks and is composed of three sitting members and three substitutes.

• Article 10(1) complements the terms of Article 14(1) of the previous resolution, establishing that the owner of a mark granted highly renowned status will not be subject to the payment of any fee other than a determined payment during the period of protection of the highly renowned status (ie, five years) for the maintenance of the status, unless the BPTO requires additional documentation to this end.

Despite the changes noted above, the new resolution does not address the question of possible requests for the recognition of a mark’s renown outside of opposition or nullity proceedings before the BPTO. Co-autor: Ana Carolina Lee Barbosa Del Bianco