In our last post, we talked about the decision by the National Institute of Industrial Property (INPI) granting high reputation status to YAKULT’s three-dimensional trademark, which identifies the fermented milk it produces.
But what is high reputation?
Provided for in art. 125 of the Industrial Property Law (LPI), the high reputation of a trademark is a status granted by the INPI that guarantees special, extended protection of a trademark’s rights due to its reputation, prestige and popularity, possessing significant added value.
By holding this status, the trademark is already considered protected to identify all products and services, regardless of whether it is registered in the specific class. Thus, in addition to exclusivity of use, the institute allows the owner to take more effective action against unfair competition from third parties.
To put this into context, the INPI, the federal authority responsible for protecting trademarks in Brazil, guarantees exclusivity in the use of trademarks and provides greater legal certainty for companies, as well as being responsible for granting high reputation status to trademarks that meet the requirements.
As it is a rigorous process, the recognition of a brand’s high reputation status requires a series of requirements, including analysis of the brand’s notoriety and fame/reputation, widespread and continuous use in the market, length of time the brand has existed, volume of sales, investment in advertising, dissemination of the brand in far-reaching media outlets, as well as recognition by a large portion of the population.
Thus, by conferring exclusivity on the use of the trademark for all products and services, even in sectors or products that are not directly related to its field of activity, other companies will not be able to use this trademark or similar trademarks that may cause confusion or undue association with consumers without the consent of its owner, the latter being able to claim moral and material damages in the event of improper use or trademark infringement more quickly.
Some brands with this status in force in Brazil are: Yakult (three-dimensional brand), VW Beetle, Barbie, Playstation, Sonho de Valsa, Bauducco, Ferrari, Petrobrás, Dona Benta, Bombril, Viagra and Paçoquita (visit https://www.gov.br/inpi/pt-br/servicos/marcas/arquivos/protocolo-de-madri/inpi_marcas_marcas-de-alto-renome-em-vigencia_31_05_2022.pdf to see the full list on the INPI website).
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