TRADEMARKS IN BRAZIL
“IN ALL PETITIONS FOR A DECLARATION OF HIGHLY- RENOWNED STATUS, THE INPI SHOULD APPLY THE REGULATIONS ISSUED FOR THIS PURPOSE, WITHOUT EXCEPTION.”
Admittedly, the federal Attorney General fi led a Direct Action of Unconstitutionality, but it did not touch upon the core issue of breach of the principle of equality. T e action was brought against specifi c articles relating to the liability of the government in the fi eld of fi nance, among others, and is pending judgment by the Supreme Court of Brazil.
In all petitions for a declaration of highly-
renowned status, the INPI should apply the regulations issued for this purpose, without exception. T is is the duty of public authorities, and inertia or omission is barred from the exercise thereof. In other words, it is inconceivable that various petitions are still pending analysis—and have been for more than a decade—and no decision has been made.
Court precedents
Free access to the judiciary is one of the principles enshrined in the Federal Constitution (Article 5, XXXV), so there is no need for a prior petition at the administrative level.
Yet for a period of eight years, from 1996 to 2004, the inertia of
the administration in regulating
the administrative process for recognising marks as being highly renowned led to owners fi nding themselves unable to adopt any judicial measure against third parties infringing upon their rights.
Consequently, various companies brought
suits seeking to obtain a general and abstract declaration that their marks enjoyed high prestige among the population of Brazil so as to assure the special protection given highly-renowned marks.
T e initial outcome of these lawsuits was highly favourable to the trademark owners, but the INPI, reviewing its position, fi led actions for relief from judgment, prescribed in Article 485 of the Code of Civil Procedure, brought before the Federal Regional Court for the second region, in Rio de Janeiro, which culminated in judgments in favour of the INPI.
T ere is an exception: the emblematic case of the ‘Goodyear’ mark, in which we were the
lawyers for the US company. T e peculiarity lies in the fact that this mark had been declared well-known based on the revoked Industrial Property Code (1971) and was fully valid when the new Industrial Property Law was sanctioned (1996). Yet the inertia and leniency of the INPI in regulating Article 125 led the owner of the mark to fi le a declaratory action in the Federal Courts owing to the absence of a rule authorising a petition before the INPI.
T e action was granted in 2002 and the INPI duly made an annotation in the trademark system, for fi ve years. T e company q ues tio n ed the the
term and form
of annotation, and 56 World Intellectual Property Review Annual 2014
Rodrigo Sérgio Bonan de Aguiar has practised IP law for more than 30 years. He has solid experience in administrative and judicial litigation before state and federal courts, including the Superior Court of Appeals and the Supreme Court. He has extensive experience in licensing and trademark counselling and is responsible for supervising litigation for several major domestic and international companies.
www.worldipreview.com
the proceedings are currently pending judgment by the Superior Court of Justice. Yet the fact is that the ‘Goodyear’ mark is the only one that enjoys the highly-renowned status recognised and declared as such by the Brazilian judiciary.
In 2013, the Superior Court of Justice served a decision in the Absolut case that the analysis of a mark’s condition that might lead to a declaration of highly-renowned status should be made by the INPI, and “even in the case of inertia by the public administration, the judiciary cannot remedy this omission and decide on the merits of an administrative proceeding, but only determine that
the proceeding be reasonable timeframe”.
In conclusion, it can be asserted that when the INPI improves its method of analysing and judging autonomous petitions for the declaration of highly-renowned status, it will be more effi cient in meeting the requests of the owners. T e judiciary will then be leſt to control the ministerial acts passed by the INPI, which should be subject to the technical parameters established in the IPL and in the current Resolution No. 107. Consequently, fi ling an action to seek the declaration of a highly- renowned mark will not be admitted without a prior pronouncement from the INPI.
Rodrigo Sérgio Bonan de Aguiar is a senior partner at Luiz Leonardos Advogados. He can be contacted at:
rbonan@llip.com
concluded within a
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