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Brazil
- Trade Mark Protection
The new
Industry Property Act enacted in 1996 seemed to further strengthen
the protection conferred on famous trade marks to ensure a special
legal protection. The law divided such distinct marks into
two categories, viz. (1) Internationally well-known trade marks,
that have a good worldwide reputation in a relevant market, and
are also recognized throughout the national territory, regardless
whether they are registered in Brazil as already established in
TRIPs Agreement, and (2) The so-called highly renowned trade marks
in Brazil that have enough distinctiveness to be recognized by the
public at large for the protection against use on any kind of goods
or services.
However,
for several years, effective protection against infringments of
rights related to famous trade marks was seldom implemented mainly
due to a gap left in the IP Law which did not establish any rule
for the recognition of highly renowned trade marks nor provide for
any kind of acknowledgement of such status.
After the
new IP Act 1996 came into force, special registration for famous
trade marks classified as "highly renowned" trade marks
which was no longer feasible and created confusion among BPTO officials
and court judges. This system was rather inefficient and time
consuming, since it demanded a lot of effort by BPTO officials and
the trade mark owner. The special protection conferred in
the IP Act on highly renowned trade marks beyond the level of protection,
since it does not require the senior user to show the likelihood
of confusion to consumers, as this status is only granted to duly
registered trade marks, which have already been through a strict
examination procedures. While the Act does not preclude the
petitioner from presenting other evidence to support the claim of
high renowned trade marks, some guidelines to be considered by the
BPTO's examiner are:
1. Date
of first use of the trade mark in Brazil, (2) number of potential
consumers of the goods and services, (3) Percentage of Brazilian
population that can be considered as users or potential consumers
of the goods or services, (4) Percentage of Brazilian population
associates the trade mark with the goods or services with which
it is used, (5) Channels of trade in Brazil for the goods and services
(6) Geographical extent of the trading areas for the branded goods
in Brazil and in foreign countries (if any), (7) Period during which
the trade mark has been effectively in use in Brazil, (8) Means
and media of promotion of the trade mark and the period of time
during which the trade mark has been promoted and advertised in
Brazil and, if applicable, abroad, (9) Sales volume of the branded
products or services in Brazil in the last three years and (10)
Gross book value of the trade mark as corporate intangible assets.
Domain
Name:
Another
important issue in the Act is the examination and granting of domain
names in Brazil. is since December 2005, with the enactment of Resolution,
the adoption of the first-co9me, first-file principle which has
not carried out a proper examination of conflicts with existing
trade marks. Thus the registration of domain names containing
famous trade marks is not unusual. With the implementation
of the resolution this practice is likely to reduce as BPTO will
have to inform the recognition and registration of highly renowned
trade marks.
Notwithstanding
the above, the new system of IP Act do represent an important advance
toward the repression of parasitic exploitation and the prevention
of conflicting decisions on the distinctiveness and market appeal
of a sign, thus turning it into an efficient tool to fight one of
the IP issues in Brazil today, i.e. brand piracy and the illicit
enrichment of abusive users of highly renowned brands.
For any
queries relating to our services and costs, please feel free to
contact us at info@iprfirm.com.
IPR
FIRM.COM - Online IPR Law Firm, India – Trade Marks, Copyright Registration,
Delhi, India
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