Back to news menu

On April 2, 2019, the Brazilian Senate (upper house) approved Bill of Law No. 86/15, which amends article 125 of Law No. 9,279/96 (the Industrial Property Act) allowing owners of trademarks registered in Brazil to request of the recognition of “famous mark” to the Brazilian Patent and Trademark Office (BPTO), regardless of opposition, administrative nullity proceeding or nullity action. The original text has been changed and will return to the House of Representatives (lower house).

The recognition of “famous mark” guarantees special protection to a trademark in connection with all business activities, due to its distinctiveness, high recognition by Brazilian citizens, quality, reputation, and prestige, being an exception to the principle of specialty, which limits trademark protection to the goods or services claimed upon filing. Once a trademark is afforded the “famous” status, identical or similar marks cannot be registered even in connection with a completely different field of activity.

The main innovation brought by the Bill of Law is that third parties with a legitimate interest may contest the “famous mark” status. Besides that, the text approved by the Senate is in accordance with the BPTO’s Resolution No. 107/2013, currently in force. The “famous mark” recognition is valid for 10 years, and can be renewed for equal periods upon submission of a new request corroborated by evidence justifying the maintenance of such status.

The BPTO has already recognized 41 famous marks, such as Havaianas, Coca-Cola Fusca, Barbie, Petrobras and Facebook.