Guidelines on protection of highly renowned marks issued

The Brazilian Patent and Trademark Office (PTO) has issued a resolution that outlines the requirements and procedures for securing the special protection given, under the trademark law in force since 1996, to highly renowned trademarks in respect of all goods and services of the Nice Classification.

The PTO has until now been reluctant to clarify what is required for a trademark to be officially considered highly renowned. It systematically rejected attempts to obtain an official declaration that certain marks be granted this status. This led some trademark owners to resort to the courts, which have issued inconsistent decisions (eg, DAKOTA and GOODYEAR were granted the status of highly renowned marks, while LYCRA and BIC were denied that status).

However, PTO Resolution 110 aims to clarify this area of law. It specifies that a separate claim for highly renowned mark status must be made as part of opposition or administrative cancellation proceedings. The party making such a claim must also pay a fee. Once the request for highly renowned mark status has been made under the relevant procedure, it is submitted to a special committee instituted to (i) assess the mark and decide whether to grant the request, and (ii) decide the opposition or administrative nullity proceedings in connection with which the request was submitted.

The petitioner must provide, with the opposition or administrative cancellation claim, any evidence that it considers pertinent to prove that the mark is highly renowned. Additional evidence may include:

• date of first use of the mark in Brazil;
  
  
• description of the consumer or potential consumer of the products or services to which the mark relates;
  
  
• description, by means of an opinion poll, market survey or by any other applicable means, of the fraction of the consumers or potential consumers of the products or services to which the mark relates that immediately and spontaneously:

  o identify the mark, and associate it with the products or services to which it relates - essentially by reason of its tradition and favourable market perception;

  o identify the mark with the products or services to which it relates; or

o identify the mark with the products or services to which it relates, due to its tradition and rank in the marketplace.

• methods of commercialization of the goods or services identified by the mark in Brazil;
  
  
• geographical area of the actual sale of the products or services identified by the mark in Brazil and, possibly, abroad;
  
  
• time span of the actual use of the mark in the national market and, possibly, in the international market;
  
  
• methods of dissemination of the mark in Brazil and, possibly, abroad;
  
  
• time span indicating the length of time the mark has been known in Brazil and, possibly, abroad;
  
  
• amount invested by the owner to advertise the mark in the Brazilian media during the previous three years;
  
  
• volume of sales of the product or the revenue accrued from the service during the previous three years; and
  
  
• economic value of the mark in the company's assets.

Interestingly, the resolution provides that evidence can be submitted to support claims that the highly renowned status of the mark cannot be substantiated.

Once a mark is deemed to be highly renowned, it shall be recorded by the PTO as a mark with this status for a period of five years. During this period, the trademark owner shall be exempt from presenting further evidence of the trademark's highly renowned status, unless the PTO requires it.

It is important to note that the resolution states that parties to pending opposition or administrative cancellation proceedings that have already presented an argument that the mark on which the proceedings are based deserves highly renowned mark status may provide the additional evidence referred to above within 60 days of publication of the resolution. No payment of the corresponding official fee will be required in such cases.

Denis Allan Daniel, Daniel Advogados, Rio de Janeiro