>[26.Aug.08] Trademarks - New Developments in the Recognition of Well-Known Trademarks in Brazil?
Source: Infomail ABREU, MERKL no. 21

There is in Brazil a controversy surrounding the proper method for recognizing well-known trademarks inasmuch as our Industrial Property Law (Law no. 9.279/1996) focused on granting special protection to well-known trademarks, but did not specify how to go about doing so. For that reason, the procedure that had commonly been adopted was to go for a judicial ruling. In 2004, however, the INPI (Brazilian National Industrial Property Institute) regulated the matter through the Resolution 110/2004, which determined that recognition for being well-known could only be claimed as defensive subject matter in administrative proceedings.

Considering that in order to bring an allegation that triggers defensive subject matter it is necessary that third parties have tried to register similar or identical trademark to the assumed well-known trademark, such procedure was viewed by many as restrictive to the right of those companies holding ownership over the assumed well-known trademark to declare it at their own initiative. Hence, many companies kept turning to the judiciary to be granted such recognition.

However, on 12.Aug.2008, a groundbreaking decision was reached by a specialized panel of judges of the Federal Court for the 2nd Region that can alter the issue's course.

According to said judges, it competes exclusively to the INPI, by incidental route, to grant well-known recognition to a trademark. As result of this decision, the requests for well-known trademark legal recognition made by Tigre (pipes and pipe connectors), Castrol (oils and lubricants for automobiles), Contini (liquor) were denied, based on the position previously adopted by the Court when, in a recent past, with the same reasons, it denied well-known legal recognition to other trademarks.

The decisions herein mentioned can still be object of an appeal, therefore, it is premature to conclude that the resolution to establish the INPI as solely in charge of recognizing well-known status to a trademark through administrative incidental proceedings is a peaceful one, although a strong trend towards that understanding is foreseeable.


< Back