PTO issues new resolution on recognition of highly renowned marks

Brazil

In view of the need to improve the recognition of highly renowned marks, on August 19 2013 the Brazilian Patent and Trademark Office (PTO) issued Resolution No 107.

Consequently, the previous resolution on this matter - namely, Resolution 110, which was issued in 2004 and  received a new number in 2013, No 23 - was revoked. 

The main points of Resolution No 107 are as follows:

  • A 'highly renowned mark' is defined as “a registered mark whose performance in distinguishing goods or services and whose symbolic efficacy leads it to exceed its original goal, thereby going beyond the so-called principle of 'speciality', in view of its distinctiveness, of its recognition by a wide portion of the public, of the quality, reputation and prestige related to it, and of its flagrant capacity to attract consumers by its mere presence”.
  • The recognition of a highly renowned mark has become an independent procedure - previously, such recognition could be requested only in opposition proceedings or when defending a trademark.
  • A request for recognition of a highly renowned mark may be filed at any time during the period of validity of the trademark registration.
  • A request for recognition must be filed via a specific petition and requires the payment of official fees. The mere reference to this special protection in any other type of petition does not oblige the PTO to issue a decision on the alleged highly renowned status of the trademark.
  • Evidence of the highly renowned status of a trademark should relate to three main elements, namely:
    • the recognition of the trademark by a wide portion of consumers in general;
    • the quality, reputation and prestige associated with the trademark and with the goods or services identified by the mark; and
    • the degree of distinctiveness and exclusivity of the mark.
  • Such evidence must be submitted to the PTO in Portuguese.
  • The PTO has created a Special Commission to issue decisions on requests for the recognition of the highly renowned status of trademarks.
  • During the examination of a request for recognition, the Special Commission may request additional information or explanations, which must be presented by the owner of the trademark within a period of 60 days.
  • The recordal of the recognition of a highly renowned mark is valid for 10 years, unless the trademark registration is extinguished before the expiry of the 10-year period or if the decision which recorded the recognition is reversed by means of an appeal.
  • Upon expiry of the 10-year period, the owner of the trademark may file a new request in accordance with Resolution No 107.
  • An appeal can be filed against a decision recording or rejecting a request for recognition of a highly renowned trademark.
  • With regard to pending requests for recognition of highly renowned trademarks, the trademark owners which have filed such requests must file a petition with the PTO within a period of 90 days informing the latter of the pending request and of the number of the application/registration in question.

Patricia Lusoli, Guerra Propriedade Industrial, Rio de Janeiro 

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