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The Brazilian Patent and Trademark Office (BRPTO), a Brazilian agency responsible for reviewing and granting applications for registration of trademarks, industrial designs, and patents, published on its website on November 12, 2024, the information that highly renowned trademarks will now have a BRPTO certificate.

The registration of trademarks, industrial designs, and patents is necessary to ensure protection against piracy or misuse by third parties, causing financial or reputation damage.

The concept of a highly renowned trademark in Brazil is directly linked to the special legal protection granted to trademarks that have notable prestige and wide recognition among the general public, regardless of the segment or field of activity in which they operate. This status is of utmost importance in characterizing highly renowned trademarks, as it constitutes an exception to the general rule of the principle of specialty, which limits the protection of trademarks to the field of activity in which they are registered.

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Highly Renowned Trademark vs. Well-Known Trademark

The BRPTO differentiates a highly renowned trademark from a well-known trademark, since the former is widely recognized by the general public, regardless of the segment or field of activity in which it operates, while the latter is one that has significant recognition among consumers and enjoys special protection, regardless of whether it is filed or registered in Brazil, as long as it is registered in one of the 170 countries that were part of the agreement signed in the Paris Convention. Furthermore, while the highly renowned trademark is an exception to the principle of specialty, the well-known trademark is an exception to the territoriality principle.

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Origin and Legal Basis of the Highly Renowned Trademark

The international legal framework for protecting highly renowned trademarks is based on the Paris Convention for the Protection of Industrial Property of 1883 and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 1994.

The Paris Convention required member countries to protect highly renowned trademarks, even if they were not registered. The TRIPS Agreement extended the concept of a highly renowned trademark brought in the Paris Convention to include service marks.

In 1999, the World Intellectual Property Organization (WIPO) adopted a Joint Resolution to protect highly renowned trademarks and their misuse. This resolution provided guidelines for determining whether a trademark would be of high renown in a member state, ensuring that it would not be used or infringed without authorization in member countries.

Highly renowned trademarks even receive special protection against dilution, which is when the distinctive power of a trademark weakens over time. Dilution can occur when a trademark sign becomes associated with a low-quality product or service, or when the trademark begins to identify products from different sources.

The idea of protecting highly renowned trademarks, therefore, was based on the interest in preserving trademarks that had an intrinsic value with a great impact on the market, preventing their dilution or inappropriate use. In Brazil, this protection is provided for in Law No. 9,279/1996 (Brazilian Patent Statute), specifically in article 125, which states:

“A trademark registered in Brazil that is considered to be highly renowned will be granted special protection in all fields of activity.”

This device provides broader protection, ensuring that the trademark is preserved from uses that could harm its reputation or dilute its value, even outside its original field of activity.

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Requirements for high renown recognition

For a trademark to be considered highly renowned, it must meet specific criteria defined by the BRPTO. These criteria are assessed in judicial or administrative proceedings, and include:

1. Wide public recognition: The trademark must be widely known, not only within its sector of activity, but by a diverse audience and nationwide.
2. Consolidated reputation: It is necessary to demonstrate that the trademark enjoys significant prestige, often associated with the quality of its products or services and consumer trust.
3. Proof of economic value: It is common for financial data and market indicators to be presented that prove the positive economic impact generated by the trademark.
4. Immediate association: The trademark must be easily identified and associated with its owner, regardless of the context in which it is mentioned.

Recognition as a highly renowned trademark is formalized by means of a decision by the BRPTO and must be renewed periodically, proving that the criteria continue to be met.

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Advantages of the recognition

Trademarks recognized as highly renowned enjoy special protection, which translates into several advantages:

1. Protection in all fields of activity: The trademark is not limited to its market segment, being protected against registrations or uses that may cause confusion or undue association, even in completely different fields.
2. Prevention of parasitic use: Protection prevents third parties from attempting to unduly benefit from the trademark's prestige.
3. Market valuation: Recognition strengthens the trademark image, adding value and enhancing its global reputation.
4. Deterrence of unfair competition: Avoid practices that could dilute or harm the trademark's prestige, such as imitations or negative associations.

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List of Renowned Trademarks in Brazil

According to BRPTO, currently (in November 2024) there are 181 highly renowned trademarks registered and recognized by that institution in Brazil, which can be accessed by clicking on this link.

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Final remarks

Recognition of high renown in Brazil is a legal instrument that reinforces the protection of iconic trademarks, essential to the market, with high visibility and prestige among the general public and consumer culture. It provides legal certainty to the owners of these trademarks and ensures that their value built over time is preserved, benefiting both companies and consumers who trust in their quality and reputation, perpetuating their existence in a sustainable manner.