On 19 August 2013 the Brazilian Patent and Trademark Office has published in the Official Gazette n. 2224 the resolution number 107/2013 concerning the application of Article 125 of the Brazilian Trademark Law, which states: “Trademarks registered in Brazil and considered to be famous will be guaranteed special protection, in all field of activity”.
The Ministry of Development, Industry and Foreign Trade (MDIC) published Ordinance n. 27 of February 6, 2014 in the Federal Official Gazette of February 7, 2014 with the official fees for the new proceeding of high-renown recognition in Brazil.
The resolution adopted in 2013 changes the requirements for the recognition of the high reputation of a brand in Brazil. Thanks to the new resolution, it will be possible to ask for the recognition of the high-renown without having to wait for the mark is challenged by a third party.
The proprietor of a trademark interested in obtaining the high-renown recognition of a trademark will have to pay specific official fees and submit a petition to the Brazilian Trademark Office, providing evidences of the high renown achieved by its trademark in Brazil.
In the event the proprietor wishes to obtain high-renown recognition for more trademarks, he will have to submit a petition for each brand. The petition may be submitted at any time, as long as the registration is valid.
The proof of the high-renown condition is linked to the presence of three requirements:
a) The trademark is known by a large part of the public;
b) Quality, reputation and prestige that the public associates with the brand and products/services covered by the brans;
c) Degree of distinctiveness and exclusivity of the trademark in question
Market searches can be useful to demonstrate the requirement of recognition of the mark by the public, as well as the attachment of a national trademark image search may help to demonstrate trademark’s reputation and prestige.
After high-renown recognition, the Brazilian Trademark Office attaches this condition to the trademark registration and such recognition will be valid for ten years, except if the trademark registration is extinguished or unless a third party file an appeal against high-renown recognition within the period of 60 days from the publication.