Special protection for ‘highly renowned’ trademarks

As a general rule, trademarks in Brazil are protected under the principle of specialty. This principle determines that a brand has the exclusive right to offer the products and services specifically requested in its trademark registration – although similar or related products and services may still be covered.

Therefore, trademark holders operating in different sectors can use identical signs to identify products and services, without creating confusion or undue association in the market.

In Brazil, however, some famous trademarks manage to attain a position in the market that provides them a special status. If such trademarks, known as ‘highly renowned trademarks’(marcas de alto renome), meet certain requirements, the principle of specialty no longer applies to them, and their protection is extended beyond the sector they operate in.

What are highly renowned trademarks?

Highly renowned trademarks are defined in Article 63 of Ordinance/INPI/PR No. 8/2022 as “(…) registered trademarks whose symbolic effectiveness  and performance in distinguishing the products or services they designate goes beyond their primary scope, thus exceeding the so-called principle of specialty due to their distinctiveness, recognition by a large part of the public, as well as the quality, reputation and prestige associated with them and their clear ability to appeal to consumers merely by their presence.”

This definition is complemented by Article 125 of Law No. 9,279/1996, which grants highly renowned trademarks registered in Brazil protection in all fields of activity.

Highly renowned trademarks are therefore recognized beyond the products and services they trade in the market. Due to their broad recognition and good reputation, these trademarks even appeal to customers in markets where they did not originally operate.

The level of recognition associated with highly renowned trademarks justifies special protection in situations that could confuse consumers about the origin of products and services or when the brand’s reputation may be adversely affected.

Accordingly, the high level of recognition creates an exception to the principle of specialty, extending protection to all areas of activity, not only those in which the trademark holder operates.

Well-known trademarks vs. highly renowned trademarks

It is important to point out that highly renowned trademarks should not be confused with well-known trademarks. Highly renowned trademarks are exceptions to the principle of specialty, while well-known trademarks are exceptions to the principle of territoriality, provided for in Article 126 of the Brazilian Intellectual Property Law (LPI) – “Well-known trademarks in their fields of activity (…) have special protection, irrespective of whether they have been registered or are located in Brazil.”

Thus, well-known trademarks do not need to be registered with the Brazilian Institute of Industrial Property (INPI) to receive protection against other companies’ undue use of their success and reputation to mislead consumers. On the other hand, highly renowned trademarks must be registered with the INPI.

Dilution and loss of reputation

One of the great advantages of being recognized as a highly renowned brand is that it provides extra protection against dilution – the progressive weakening of the brand’s distinctive power, one of the reasons for trademark registrations. Dilution adversely affects the brand’s distinctive signs and symbols, reducing its appeal to consumers and, consequently, the volume of sales.

Dilution may occur when:

• The highly renowned sign is associated with a low-quality product or service or a concept that is rejected by society on moral grounds (trademark tarnishment);
• The trademark starts identifying products and services from different sources, losing its capacity to stand out and its selling power (blurring); or
• The form of the trademark’s presentation is modified, harming its unique image and indirectly affecting the distinctiveness of the original trademark (adulteration).

Recognized ‘highly renowned’ trademark holders have more resources for protecting their sign against the effects of dilution, keeping their brands’ positioning protected against adverse impacts.

The INPI’s requirements for special protection

To be granted special protection, highly renowned trademarks must be recognized as such by the INPI, meeting three fundamental requirements:

• The trademark must be broadly recognized by a large part of the Brazilian public – which can be proven, preferably, by conducting a market survey;
• The public must associate the trademark and its corresponding products and services with good quality, reputation and prestige – preferably proven through a nationwide brand image survey;
• A clear degree of distinctiveness and exclusivity of the trademark.

Recognizing ‘highly renowned’ status

Once the INPI recognizes a trademarks highly renowned status, it is granted protection throughout Brazil against identical or even similar trademarks, irrespective of the highly renowned trademark’s sector.

The recognition of this status is maintained for ten years, although the trademark holder may request it to be renewed by proving that it is still highly renowned, as defined by Article 9 of INPI Resolution No. 107/2013.

This time limit is in line with a Brazilian Superior Court of Justice (STJ) decision, which in Special Appeal No. 1,207,026/RJ, determined that “Granting highly renowned status without a time limit would be the same as granting a right in perpetuity, which is not supported by the legal system (…).”

Over this period, the trademark enjoys a privileged status, with access to more effective mechanisms to maintain its strategic position in the minds of consumers.

A list of highly renowned trademarks in Brazil is available on the INPI’s website.

For further information about trademark strategy, please see our special series Legal Challenges in Brand Positioning.

*With the collaboration of Julia Leite Contri.

*The summary of this article is available in German, French, Japanese and Italian at this link.