Digest Of Principles

Author:Mr Rodrigo Borges Carneiro
Profession:Dannemann Siemsen
 
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On November 13, 2014, the Brazilian Superior Court of Justice published a digest of principles based on rulings of this court in trademark and industrial property cases.

Under Brazilian law, courts are not bound by such principles, but they are commonly used and cited nonetheless by both lawyers and judges from state and federal courts in motions and decisions.

In relation to trademarks the digest encompass among others the following principles:

The highly renowned trademark (Article 125 of the Industrial Property Law-LPI) is an exception the principle of specificity and has special protection in all fields of activity, if previously registered in Brazil and so declared by the INPI - Institute National Industrial Property.

This clarifies the position that there is a need of a previous declaration by the INPI for a mark to be considered a highly reputed mark. The whole process of declaration is now regulated by Resolution 107/2013 of the INPI which has modified the previous procedure and no longer requires that the declaration be request only incidentally as part of an opposition or administrative cancellation procedure. The request is now object of a separate proceeding.

The well-known mark (Article 126 of the IPL -.. Law No. 9,279 / 96) is an exception to the principle of territoriality and enjoys special protection in its market segment regardless of registration in Brazil.

This is in line with the protection afforded by the Paris Convention and article 126 of our Industrial Property Law. It should be noted that the TRIPS agreement also in force in Brazil grants special protection for well-known marks in relation to goods or services which are not similar to those in respect of which a mark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

The current highly renowned brand concept provided in art. 125 of the IPL is analogous the old concept of notorious marks referred to in art. 67 of the repealed Property Code Industrial - Law no. 5,772 / 71.

This just clarifies matters of terminology and some confusion which in older cases existed as to the scope of protection of highly reputed marks. As the current Industrial Property Law has now almost 20 years this is of minor practical consequence.

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