Jumping through hoops – qualifying for well-known status in Brazil

Well-known trademarks in Brazil benefit from special protection under Article 125 of the Industrial Property Law, which replaced the legal term ‘notorious trademarks’ with that of ‘well-known trademarks’ (although the concepts remained the same).

The Patent and Trademark Office (PTO) has issued three resolutions since the law came into effect in 1997. These establish administrative proceedings designed to recognise the well-known status of famous marks and provide these marks with extra protection. However, rights holders still face various obstacles when it comes to protecting their well-known marks.

This article discusses several issues that have been raised in administrative decisions issued by the PTO in the two years since it released Resolution 107/2013.

History

Although the Industrial Property Law came into force in 1997, the PTO did not issue its first resolution on well-known marks until January 2004. In the interim, rights holders had to file a court action in order to obtain a judicial declaration that their mark was in fact well known. Under pressure from the Attorney General’s Office, as well as from local industrial property agents, the PTO began work on a normative act to provide for recognition of well-known marks in Brazil.

The first of these acts was Resolution 110/2004, which established that a trademark can be recognised as well known only at the request of the registered owner and as part of an opposition or invalidity action. It provided that recognition would last for five years, with recordal at the PTO designed to avoid unnecessary costs and ensure that evidence of the mark’s fame need not be resubmitted.

However, Resolution 110/2004 did not specify how declarations that a mark is well known can be renewed. Nor did it set out a mechanism whereby rights holders can seek a declaration of recognition independent of an administrative objection to a third-party mark.

Resolution 110/2004 was revoked by Resolution 121/2005, which introduced a definition of a ‘well-known trademark’ and created a special committee within the PTO for analysing and prosecuting requests for declarations of well-known status.

Eight years later, Resolution 121/2005 was in turn revoked by Resolution 107/2013, which is still in force today and is the basis of the administrative decisions discussed below.

Main aspects of Resolution 107/2013

The greatest contribution of Resolution 107/2013 has been to establish an autonomous proceeding under which owners of marks that have been found to be well known can apply to record this status at any time while the trademark registration is still valid.

It also extended the recordal term from five years to 10, saving rights holders significant costs with regard to public surveys and further gathering evidence of a mark’s well-known status. However, there are still no provisions on renewing a declaration of well-known status.

In examining a request for such a declaration, the PTO’s special committee may request additional information or explanations, which must be presented within 60 days. An appeal can then be filed against the committee’s decision.

According to Article 3 of the resolution, proof of well-known status involves three main requirements:

• The mark is recognised by a wide proportion of consumers;
• Quality, reputation and prestige are associated with the mark and the goods or services identified by it; and
• The mark has a degree of distinctiveness and exclusivity, according to Article 4 of Resolution 107/2013.

These requirements derive from Article 1, which defines a ‘well known mark’ as a registered trademark which is so effective that it “exceeds its original goal, going beyond the limits of the so-called principle of specialty in view of its distinctiveness, of its recognition by a wide portion of the public, of the quality, reputation and prestige related thereto and of its capacity to attract consumers through its simple presence” (emphasis added).

With regard to the necessary degree of distinctiveness and exclusivity, Article 4 states as follows:

Article 4 – The request for the special protection foreseen by this Resolution must be accompanied by appropriate evidence of the highly renowned status of the mark in Brazil.

Paragraph 1 – With regard to the requirement indicated in item I of Article 3, it is advisable to attach market surveys without prejudice of submission of media plans, articles and publications issued in various media.

Paragraph 2 – With regard to the requirement indicated in item II of Article 3, it is advisable to submit surveys of the image of the mark with national scope, without prejudice of presentation of additional documents that the owner of the mark deems adequate to prove the image of the mark in the country.

Paragraph 3 – It is possible to submit copies of court actions or court references related to the defence of the mark against attempts of dilution and parasitic advantage, if this is the case.

Paragraph 4 – The abovementioned evidence may contain information such as:

1. temporal extension of dissemination and effective use of the mark in the national market and, eventually, abroad and a description of the consumer or market potential consumer of the products or services to which the mark is applied;

2. profile and proportion of the public user or potential user of the goods or services to which the mark applies, and profile and proportion of the public user of other market segments that, immediately and spontaneously, identify the mark with the goods or services to which it applies;

3. profile and proportion of the public user or potential user of the goods or services to which the mark applies, and profile and proportion of the public user of other market segments that, immediately and spontaneously, identify the mark essentially for its tradition and qualification in the market;

4. means of commercialising the mark in Brazil;

5. geographical range of effective marketing of the mark in Brazil and, eventually, abroad;

6. means of publicising the mark in Brazil and, eventually, abroad;

7. the amount invested by the owner in publicising and advertising the mark in the Brazilian media during the last five years;

8. volume of sales of the product or of the revenue accrued from the service during the last five years;

9. economic value of the mark in the company’s assets;

10. profile and number of people in Brazil affected by the media in which the owner markets its mark;

11. information providing clues that the distinctive character of the mark claimed as highly renowned is being diluted or that a third party is taking parasitic advantage of the mark;

12. information evidencing the identification of the public to the mark values;

13. information showing the degree of consumer confidence with regard to the mark.

The PTO issued a new Trademark Manual at the end of 2014. According to this, the special committee gives greatest weight to market surveys when ruling on whether a mark is well known.

Controversial aspects

An analysis of recent decisions on well-known status suggests that the PTO needs to review and clarify the following issues in order to provide more consistent decisions and greater legal certainty for owners of registered trademarks. In particular, there appears to be:

• undue re-examination of the distinctiveness of the trademark when determining whether it is well known, along with a refusal to recognise secondary meanings;
• conceptual confusion of exclusivity versus uniqueness;
• undue quality analysis of the goods and services involved, contrary to Article 4 of the Paris Convention; and
• undue restrictions with regard to the evidence that may be submitted to support a declaration of well-known status.

Currently the PTO refuses to consider secondary meaning, holding that IP rights in Brazil are granted through an attributive system, which privileges the first person to file for registration of a mark; consequently, the Industrial Property Law contains no specific provisions on this matter. However, the trademarks director is discussing the possible adoption of an administrative proceeding aimed at recognising the secondary meaning of trademarks.

First, in recent decisions the PTO has unduly re-examined the distinctiveness of a mark during the proceedings to establish whether it is well known. However, distinctiveness is a mandatory prerequisite for registration in the first place, so there is no need for re-examination in this area. In fact, distinctiveness should be considered only to the extent that it affects knowledge of the mark in the market. Thus, if the rights holder is not opposing or requesting invalidation of a third-party mark, but is merely seeking a declaration of well-known status, there are no grounds to re-examinine distinctiveness.

When determining whether a mark is well known, the PTO should analyse whether the mark’s fame exceeds its basic function (ie, to identify certain goods and services). Well-known marks can arguably be distinguished from other trademarks by the identity they develop before consumers.

Second, the PTO appears to have misunderstood the distinction between exclusivity and uniqueness. Article 125 of the Industrial Property Law guarantees protection in all fields of activities for well-known trademarks. When examining requests to determine whether a mark is well known, examiners have adopted a strict interpretation which is leading them to refuse requests if an identical trademark is listed in the official database. In other words, in order for a mark to be granted well-known status, it must be unique and cannot have been registered previously by third parties – even though this is not required by the Industrial Property Law.

The Brazilian Patent and Trademark Office has issued three resolutions aimed at making it easier for trademark owners to obtain protection for highly renowned trademarks

However, while uniqueness is an argument in favour of well-known status, it is not an absolute condition. In Philips the Federal Court of Appeals recognised the fame of the PHILIPS mark in connection with electric and electronic apparatus, despite the existence of prior registrations for the mark by different rights holders to identify bicycles and toothbrushes. This question could be easily resolved without jeopardising third parties’ prior rights if the PTO were to amend its Trademarks Manual.

Examiners should not re-examine the distinctiveness of trademarks when deciding on well-known status, but should rather limit their examinations to the following questions:

• Is the trademark easily recognised by Brazilian consumers and has its fame exceeded its original field of activity?
• Will the use of the trademark by third parties for different activities and in different classes generate an undue association of origin which may result in parasitic competition?
• Will the use and registration of the trademark by third parties for different activities and in different classes dilute the mark’s distinctive power?

Finally, the requirement that a well-known mark have quality, reputation and prestige (Article 3(II) of Resolution 107/2013) has sparked heated debate. The PTO has rejected many requests to recognise well-known marks as a result of non-fulfilment of this requirement; but it is not defined by any regulation. However, the PTO’s practice suggests that recognition of well-known status is becoming conditional on the quality of the goods or services identified by the mark in question.

What really matters is that a well-known trademark meets consumers’ expectations, regardless of the quality of the products or services it denotes. The essential aspect for a declaration of well-known status is that the mark transmits values (either good or bad) which create its identity.

The PTO is also becoming increasingly restrictive with regard to the evidence of well-known status that it accepts – with regard to not only the types of evidence presented, but also the degree of recognition among consumers. As regards the former, an analysis of declarations of well-known status which have been granted suggests that examiners privilege evidence from public opinion surveys, as suggested by the Trademarks Manual.

In some decisions examiners appear to have demanded a high degree of recognition of the mark among the general public. A fair examination should rather consider the whole context of the mark, including the products or services covered, the target consumers, the duration of use and the market conditions in the relevant sector. Arguably, knowledge of the trademark by the public in general should be considered on a case-by-case basis, and examiners should be more flexible in their analysis.

Conclusion

Given these controversial issues, a group of Brazilian IP associations has published some recommendations aimed at improving the quality of the PTO’s decisions on well-known status. These include:

• excluding Article 3(II) of Resolution 107/2013 (“Quality, reputation and prestige associated by the public with the mark and the goods/services identified”);
• excluding Article 3(III) of Resolution 107/2013 (“Degree of distinctiveness and exclusivity of the mark under reference”);
• adding the following provision to the Trademarks Manual – “The protection foreseen by Resolution 107/2013 neither affects acquired rights nor withdraws from the public domain the right to use the word in its real connotation”;
• adding a provision to establish that a request for a declaration of well-known status be published in the PTO’s official database. This will make transparent not only the decision itself, but also the fact that a request is pending, which would affect the search results in both cases; and
• adding a deadline for renewing a declaration of well-known status. Renewals could be applied for during the last year of validity of a recordal of well-known status.

These suggestions are under examination by the PTO’s Trademarks Directorate and, if accepted, will constitute a real benefit to rights holders and to the IP community in general.