Brazil: Renowned marks gain increasing recognition

Brazilian IP law believes that renowned marks deserve special protection in all fields of activity. Differently from well-known marks, which are protected within their field of activity and regardless of the existence of a local registration, renowned marks must be registered and then go through a specific proceeding at the BPTO for a declaration of high renown which will be valid for 10 years.

High renown requests were positively affected by the recent BPTO trend to expedite trademark examination bearing in mind the recent accession to the Madrid Protocol. Not only has the BPTO's examination productivity increased, but examiners have also become less stringent about the necessary requirements for marks to be deemed highly renowned.

As a result, there are currently 114 trademarks of high renown in Brazil ranging from local brands such as "Flamengo" and "Brastemp" to international ones such as the recently granted "Vogue" and "Avon".

With a declaration of high renown at hand, brands will deserve a streamlined examination process at the BPTO against third parties' reproductions or imitations and will have a very powerful enforcement tool to be used in court.

The Brazilian Superior Court of Justice has reinforced several times the special protection afforded to marks of high renown provided that the corresponding declaration is granted by the BPTO.

One question that has recently arisen is whether there should be any limits to such special protection. While it is a fact that protection should not be limited to field of activity, it is still unclear whether the level of distinctiveness of the mark of high renown should play a role in infringement assessments. In other words, should fanciful or arbitrary marks of high renown deserve stronger protection than suggestive renowned marks? The question is still to be answered by our courts but, in the meantime, it is expected that trademark owners will use the judicial enforcement route more and more.

André Oliveira

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