Since 2014, when a decision of the Brazilian Patent and Trademark Office (BPTO) came into force that held trademarks could obtain “high renown” status through a specially-created procedure, there has been a marked increase in such requests in Brazil. However, this increase has also demonstrated that several marks which common sense would say that are well known and recognized by the public have been rejected due to technicalities. This article will tackle the main issues that may arise during the finding of a famous or high renown trademark in Brazil, and how to avoid them.
High Renown versus Well-Known
Initially, it is necessary to understand that high renown or famous marks and well-known marks are completely different institutions in Brazil. On the one hand, well-known marks are recognized on a case by case basis, regardless of prior registration in Brazil, and only enforceable within the mark’s particular market segment. On the other hand, high renown marks are enforceable in all markets, in all classes, and this status must be recognized by the submission of a specific request before the BPTO abiding by a specific procedure and subject to the payment of official fees.
To put the two processes into perspective, between March 2015 and March 2020, of the 117 high renown marks recognized by the BPTO, only 50 of them were allowed at the appeal level, after being initially rejected.
The BPTO Resolution Nos. 107/2013 and 172/2016 determined three essential requirements that must be met by trademark owners to achieve the high renown of a trademark:
- The trademark must be recognized by a large portion of the Brazilian public;
- The Brazilian public must associate the products/services with quality, prestige and good reputation;
- The trademark must have obtained a high degree of distinctiveness and exclusivity.
Five Pointers for Success
While complying with these three requirements may seem straightforward, since there is no predetermined list of evidence or arguments to be filed, practice has shown that there are some concrete ways to avoid a rejection, and thus to avoid wasting time and money due to a technicality. The following five points should be observed and taken into consideration when filing a petition for high renown before the BPTO.
Point 1: Without a market survey, the chances of securing high renown status are close to zero.
Even though the word used by the BPTO is recommendation when mentioning the type of evidence that can be used by trademark owners to prove that the three high renown requirements have been achieved, the fact is that, without a robust market survey, the chances of success are low.
If we review all high renown marks granted in Brazil through today, such as Google, Instagram, Shell, Nissan, etc., we see they all presented sophisticated market surveys demonstrating good results in terms of their overall public recognition. However, marks such as , SAMSUNG, CHIVAS REGAL, DANONE CAMPARI, LEVI’S, and have had their high renown requests easily dismissed because a market survey was not presented at all – even though tons of evidence, such as ads, marketing, general investments made over the years, and invoices were presented.
In some cases, the BPTO gave the applicants a chance by issuing an Office Action requesting additional evidence to be filed. However, if in compliance no market survey was filed, the fame request was almost instantly rejected.
Based on these numbers and facts, even though the BPTO “recommends” the presentation of a market survey, the fact is that such a survey is mandatory to have a good chance of success.
Point 2: If you decide to pay for a market survey, make sure that the research is made with care, attention and follows the correct standards.
In several cases, even though a market survey was filed, the high renown request was ultimately rejected by the BPTO.
As mentioned before, a high renown trademark must be recognized by a large portion of the Brazilian public, which should also associate it with quality, prestige and good reputation. Therefore, the company performing a market survey must be very careful not to exclude an important element from the results that may compromise the final outcome. This is exactly what happened in the analysis and rejection of well-known marks such as Lycra, , H.STERN and POST-IT.
One of the most common mistakes is incorrectly restricting the survey and solely reaching out to interviewees from the most populated regions in Brazil, as it is an important requirement that the market survey includes representatives from all Brazilian regions. This means, for example, if the survey is only conducted in one state, it will not be accepted as proof by the BPTO.
Additionally, on the market survey, gender and members of all social stratifications must be represented in equal proportions, otherwise, the survey will be considered biased. For example, some high renown applications were rejected because they only included wealthier members of Brazilian society and excluded the poor.
Finally, regarding the way a market survey is conducted, another common mistake is how the mark is presented to the interviewees. It may seem obvious, but if one is seeking the high renown of a word & design mark, or even of a figurative mark, it necessary that the image presented to the participants of the market survey corresponds exactly with the image of the registered trademark used as a basis. This means that if you only show the word part of a word+ design mark without the image, or if you present a design that is different than the registration used as the basis of the high renown request in your survey, even if you reach a good result, the market survey will likely be dismissed.
Point 3: If your market survey shows that your mark is known by less than 50% of the Brazilian Public, do not seek a fame finding before the BPTO; instead, invest in branding and re-do the survey when the mark has more overall recognition.
It is common for high renown requests to be denied because a market survey had a bad overall result. Even if 50% represents about 105 million people – which is more than several countries worldwide – the BPTO has been repeatedly refuting this argument and rejecting high renown marks that show recognition by fewer than 50% of the population.
Nevertheless, the fact that the desired mark received a low result on the market survey does not mean that after investment in branding, advertising and sales it cannot acquire higher recognition in the Brazilian market.
High renown marks are analyzed by the BPTO according to their current status. This is the reasoning behind the fact that, 10 years after a high renown mark is granted, it is only possible to “renew” the high renown status if the applicant goes through the process again from scratch to prove that the mark is still recognized by a large portion of the Brazilian population and associated with quality, prestige and good reputation; otherwise, the mark will lose its status.
Point 4: The mark must be well-known in Brazil
An important mistake that is made especially by foreign applicants is to believe that if a trademark is famous worldwide, high renown will be automatically granted in Brazil.
Sometimes, a trademark is very popular in the United States or in Europe, but is not even well-known in Brazil. So, as the BPTO requires the mark to be recognized by a large portion of the Brazilian public, if the applicant is only able to prove that a mark has fame abroad, it will not be sufficient to support the granting of high renown status to its mark in Brazil. Nevertheless, this proof can always be used to support notoriety claims.
Point 5 – If your mark already coexists with other identical registered trademarks before the BPTO, this is not a definitive bar to securing high renown status.
The third requirement of the high renown resolution, namely, that a trademark must have obtained a high degree of distinctiveness and exclusivity, has been overlooked by the BPTO in several cases. Hence, the existence of identical or similar marks in the name of third parties hasn’t been shown as a definite impediment to securing high renown status.
This means that, even if two or more trademark owners own a trademark with a similar expression, the one who is able to prove through a market survey that its mark is well-known and immediately associated with the applicant company by a large number of Brazilians, and that the mark has prestige, quality and good reputation, usually is the one who secures high renown status.
The existing identical/similar marks in the name of third parties will remain valid, but it will stop them, or other third parties, from expanding their portfolio through new filings.
Worth the Time
Finally, although filing and securing a high renown mark may seem like a difficult and expensive task, if the procedure is undertaken with care and attention to these five points, the benefits of this investment are significant.
Within a five-year period (from May 12, 2015 to May 12, 2020), 1,103 marks were rejected due to the existence of high renown marks. Thus, even if the initial cost to secure high renown status may seem hefty, it easily pays off by the increase in the chances of success in enforcing the mark against third parties. Additionally, in several cases these rejections due to existing high renown marks have been made ex officio by the BPTO, so the trademark owner does not have to spend extra money in protecting its assets against free riding and dilution.
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Article published on IPWatchdog. Read it here.