Articles and Information

• ‘Opinion polls’ are recognised as an appropriate means to support a ‘highly renowned status’ declaration.
• INPI has opened a public consultation discussing detailed parameters for opinion polls.
• Submission of nationwide opinion polls will be mandatory.

Background

The Brazilian Trademark Law (No 9,279/96) contains a provision that grants special protection to highly renowned marks – namely, those brands that are known by a large portion of Brazilian consumers. The protection of such marks goes beyond the goods or services covered by the corresponding registrations and constitutes an exception to the principle of specialty of trademarks. To obtain such protection, the owner of a registered mark must follow a particular process, in which the trademark’s fame and recognition among local consumers must be demonstrated.

Since the current Trademark Law was enacted in 1996, the recognition of the ‘highly renowned status’ of a mark has been controversial: discussions ranged from whether a specific procedure should be adopted to grant special protection to a mark to the term of such special protection. Only 181 registered marks have obtained and maintained the status of ‘highly renowned’ marks in Brazil.

When a specific procedure was finally adopted by INPI, it was unclear which evidence should be submitted by trademark owners to prove the highly renowned status of their marks. Trademark practitioners and owners decided that submitting ‘opinion polls’ could be a good strategy, and use of such documentary evidence became popular among trademark owners.

However, INPI seemed unprepared to evaluate such evidence, which opened the door to inconsistent decision-making. As theprocedure evolved, INPI issued guidelines listing the documentary evidence that trademark owners should present, and adopted‘opinion polls’ as an appropriate means to support a ‘highly renowned status’ declaration.

New parameters for opinion polls

In an effort to improve this procedure, on 8 April 2025 INPI opened Public Consultation No 001/2025. This public consultationintends to discuss detailed “parameters for opinion polls” that may be presented to prove the highly renowned status of a mark.

In particular, INPI provided the public with the drafts of a resolution altering Section 66 of Resolution No 08/2022 (which governsthe proceedings to obtain a ‘highly renowned status’ declaration) and introducing new provisions to the Trademark ExaminationGuidelines. According to the changes introduced in Resolution No 08/2022, submission of nationwide opinion polls will bemandatory and will have to comply with proposed parameters. Such criteria will be established by the provisions of the TrademarkExamination Guidelines.

The new parameters for opinion polls are very detailed and cover the following:

1. the general aspects of the opinion polls (encompassing the knowledge of the mark, its association with the relevantproducts and services, and its fame and reputation);
2. the requirements for recruiting interviewees and obtaining research samples;
3. the representativeness of the samples (considering geographic, human and social and economic aspects);
4. the practical norms for conducting opinion polls;
5. mandatory questions for interviewees (relating to the knowledge of the mark, its association with the products and servicesand the consumers’ perception of the mark’s quality, reputation and fame); and
6. the presentation of the results of the opinion polls, which cannot be redacted and must be submitted in their completeversion.

Comment

Owners of marks that have already been declared as highly renowned must pay attention to the proposed changes: if approved,they will be applicable to the renewal of existing declarations.

Trademark owners and practitioners (either individually or through professional or academic associations) have a 40-day term(ending on 18 May 2025) to submit their opinion on the proposed changes. INPI will then decide which changes will be adopted.

Originally published on WTR Daily on April 28, 2025.

Ricardo Pinho
Guerra IP – Partner