by Ana Montenegro and Eduardo Hallak After issuing Resolution No. 107 on August 2013, which changed the rules regarding the declaration of trademark as having high-repute status, the Brazilian Patent and Trademark Office (“BRPTO”) now discloses facts and figures that help to clarify what trademark owners can expect from the process and how to successfully obtain such status for their trademarks. Resolution No. 107/2013 (in force since March, 2014) enabled trademark owners to apply directly to the BRPTO for special protection as foreseen in Article 1251 of the Brazilian IP Law. Before the Resolution came into force, high-repute status could only be claimed by means of an opposition or by administrative nullity proceedings against marks owned by conflicting third parties. The new application for high-repute status may be filed at any time during trademark registration validity. The cost of the application is approximately USD 12,500 in official fees and a 10-year protection term is provided once the grant issues and it is published in the Official Gazette. These applications are analyzed and decided by a Special Commission created by the BRPTO which is composed by 5 experienced Examiners and coordinated by the Trademark Commissioner. According to official statistics, the BRPTO has so far received 249 applications for a high-repute declaration. Of these, only 19 decisions were delivered (detailed in the chart below), indicating an average processing time of 472 days for a decision to be rendered.
According to the members of the Special Commission, the BRPTO established a goal of 4 new decisions per month, beginning February 2015. The current 79% rejection rate by the Special Commission can in part be explained by poor documentary proof submitted by applicants. The specific grounds for rejection have been the lack of evidence regarding: (i) recognition by a large portion of the general public; (ii) quality, reputation and prestige that the public associates with the mark and the associated products or services; and (iii) degree of distinctiveness and exclusivity of the sign. According to article 3rd of Resolution No. 107/2013, the “high-repute application package” must contain the following documents and information:
It is worth stressing that even though the BRPTO requires the submission of recent trademark track-records (documentation referring to the past 5-years), high-repute trademark phenomena can be extended over time. This can be seen in the BRPTO’s decision granting high-repute to the “FUSCA” trademark. The facts of this case are very specific as Volkswagen stopped manufacturing the FUSCA car in Brazil in 1996 and only resumed its commercialization in the years 2012/2013. Despite facing such a long non-use period, the BRPTO considered that Brazilian consumers had retained the memory of the FUSCA trademark and that Volkswagen had succeeded in submitting adequate documentary evidence in respect of the high level of public acknowledgement and appreciation of the mark. The above mentioned decision revealed the Special Commission’s technical ability and capacity to review the specific timing and market circumstances, factors which are essential to understanding and processing high-repute trademarks. Finally, it is worth pointing out that high-repute declarations cannot be automatically renewed by the BRPTO. In order to do so, the trademark owners must submit a specific request and introduce new evidence attesting that the trademarks’ prestige survived in time. If you have any questions or need additional information, please contact us at prevail@localhost/licks/site.
1 Article 125 of Law # 9.279/96 - A trademark registered in Brazil that is considered highly reputed shall be assured special protection in all fields of activity.