A New System for Obtaining Recognition of Famous Trademarks in Brazil

On August 20, 2013, the Brazilian PTO published Resolution No. 107/2013, of August 19, 2013, which establishes an independent and facilitated procedure regarding article 125, of the Brazilian Industrial Property Law (Law No. 9.279/96) concerning famous marks in Brazil. The Resolution will enter into force after the Brazilian PTO publishes a new schedule of official fees including the fees for this new procedure, which is expected to be published in the upcoming days.

With the entry into force of the new text, former Resolution No. 23/13 will be revoked. The new independent procedure for requesting the famous status of a mark is an improvement of the old system, where a request for the grant of the famous status of a mark could only been made incidentally, as a defense argument, during opposition or administrative nullity action procedures. Now, with the new resolution, such request can be submitted to the appreciation of the Brazilian PTO anytime during the validity of the mark.

According to the new procedure, a request for the famous status shall be filed through a specific petition including all the necessary evidence of famous status of the mark, duly translated to Portuguese. Each requirement shall comprise only one mark and can be submitted at any time while the mark is valid.

To be considered a famous, a trademark must fulfill  three main requirements: i) wide recognition  by the public in general; ii) high level of quality, reputation and prestige associated by the public; and iii) sufficient degree of distinctiveness and exclusivity.

After the examination of the request and upon the publication of the grant, the famous status of the mark shall be valid for ten years, instead of only 5 years in the old system, unless the mark is cancelled before the end of said period or the decision of the grant is reversed. Finally, after the end of the ten year period, a new request may be filed in order to maintain the famous status condition.