On January 2, 2019, the Brazilian Trademark Office (BPTO) granted the status of highly reputed to the FLAMENGO mark on behalf of the CLUBE DE REGATAS DO FLAMENGO, one of the major Brazilian Football Team.
CLUBE DE REGATAS DO FLAMENGO is the first Brazilian football team to obtain the Highly Reputed status, for the FLAMENGO mark entering the select group of 107 marks that enjoy this special condition in Brazil.
The importance of obtaining the High Reputation status of a brand is that it provides Clube de Regatas do Flamengo and the marks that have achieved this special condition a greater protection given by local legislation.
The differentiated protection conferred to the Highly Reputed marks is supported by article 125, Law 9.279 / 1996 (Industrial Property Law), which establishes:
Art. 125. The trademark registered in Brazil considered as of highly reputed status will be guaranteed special protection in all branches of activity.
However, in order to qualify for this special condition, it is necessary to meet certain criteria established by the legislation. During an administrative process, it must be proven: recognition of the mark by a large part of the population in general, sufficient degree of quality, reputation and prestige that the public attributes to the products or services designated by the brand.
Therefore, it is not enough to be a famous brand to have the condition of highly reputed brand recognized, it is necessary to provide to the INPI through an administrative procedure, the pertinent documentation that proves the fulfillment of the established conditions.
Just to illustrate the difficulty faced to obtain such status of a highly reputed brand, the administrative procedure initiated by the applicant for the FLAMENGO mark began incidentally in 2014. However, due to the changes in the rules during the course of the procedure, only in 2019 INPI recognized the special status to the mark which received such special protection status supported by the article 125 of Law 9,279 / 1996.
Initially, the administrative procedure was instructed with a great number of supporting documentation (searches by several research institutes on the number of fans of the club, studies disclosed with the value of the brand, news with values of sponsorship contracts, products marketed under the brand, among others documents). Nonetheless, the INPI understood that despite the strong evidence, the data would not be conclusive to attest the national recognition, quality and prestige necessary for the recognition of the highly reputed brand status for the Flamengo mark.
Only during appeal level, after the formulation / presentation of specific public opinion research to attest the wide degree of knowledge of the FLAMENGO brand by the population, also assessing the reputation of the brand with the public in general, that the INPI accepted the evidence and granted the highly reputed official status for the FLAMENGO mark.
This special protection provides the FLAMENGO mark not only with a position of prestige and recognition but also a true competitive and economic advantage to its owner, because it offers a position of primacy in conflicts involving identical/similar brands, at an administrative or judicial levels.
Despite the time-consuming process, the first precedents begin to emerge, as per the recent INPI decisions, highlighted below:
• Process nº 914204343, ISSO AQUI É FLAMENGO 1895 PRN SRN - mixed class, class 25.
Applicant: Gabriel Kagan Reis
Status: application for registration rejected on 19/02/2019 - The trademark reproduces or imitates the highly reputed brand FLAMENGO, therefore it is not allowed to be registered in accordance with Article 125 of the LPI. The trademark reproduces or imitates the following records of third parties and is therefore unregistrable according to item XIX of Article 124 of the LPI: Process 822849135 (FLAMENGO) and Process 907722318 (Tenis de Regatas do Flamengo):
• Process nº 908278039, #SOU MAIS FLAMENGO - mixed, class 36.
Applicant: Marcio Lorega Azeredo Barbosa
Status: application for registration rejected on 03/19/2019 - The trademark reproduces or imitates the highly reputed trademark FLAMENGO, and is therefore unregistrable in accordance with Article 125 of the LPI.
The earliest precedents above mentioned highlight the effectiveness of obtaining the status of a highly reputed brand, because even in different product/service classes, INPI is rightly preventing the consolidation of rights to third parties that violate the special protection conferred to the FLAMENGO mark.
Therefore, it is already possible to notice the consolidation of the competitive advantages enjoyed by highly reputed marks in Brazil, since the agency responsible for the analysis and granting of trademarks rights in brazil has observed and applied in a satisfactory manner the legal provisions to protect the brands that have achieved this differentiated status.
Fonte: Lexology - https://www.lexology.com/library/detail.aspx?g=afd56fe4-3e3a-4301-a6bc-ff5c40142f1d