The Brazilian INPI, National Institute of Industrial Property, finally put resolution No. 107/2013 in effective on March 10, 2014. The ordinance was designed to make it easier to acquire famous and well-known trademarks. Owners of highly renowned status trademarks in Brazil previously could not file a request for their well-known trademarks without having it infringed or in litigation. This recently implemented resolution makes it easier from now on. Owners can now file independently for their well-known trademarks without the need to have their trademarks disputed. The resolution moreover prolongs the time period of a well-known trademark as well from 5 to 10 years.
The protection of a well-known trademark enjoys is recognized in two multilateral treaties. The Paris convention for protection of Industrial Property and the TRIPS Agreement. Well-known trademarks and service marks enjoy protection against other trademarks. Some information is taken in consideration to see if a mark is certificated as well-known. The recognition and valuation of the public with the mark. The duration, extent and geographical area of the use and promotion of the trademark. And the recognition by competent authorities. A uniform definition of this kind of trademarks although is not included in these treaties. Making the concept open for interpretation causing variation in the implementation of the legislation. The resolution of the INPI now acknowledges and provides special protection granted to famous trademarks.
Since nowadays consumers use brands as a way to measure themselves. Making well-known trademarks a symbol of prestige. Well-known trademarks have been extensively promoted by owners and making it profitable since famous and well-known trademarks do enjoy some extra protection by the international treaties. Following the international treaties other trademarks cannot be registered when these trademarks imitate, reproduce or may cause confusion with the well-known trademark. Brazil famous trademark owners now enjoy their special protection provided by the national law. In February 2013, the Brazilian INPI judged about the iPhone case in favor of a local company about the ownership of the iPhone trademark in Brazil. Since Brazil is a first to file country, the one who was first to file a brand has ownership over this brand, use does not need to be proven. The local company Gradiente Electronica owned the trademark even though the iPhone of Apple Inc. is a well-known brand. Yet another case that shows the complexity of national and international IP protection.
(Source: IP News from Latin America)
