September 15, 2012
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BRAZIL: Impacts of the 2014 World Cup Law on Brazilian Trademark Law
On June 5, 2012, the National Congress approved and President Dilma Roussef enacted Law No. 12,663/2012, titled General Law on the World Cup and the Federations Cup. Applicable from its publication date and in force until December 31, 2014, the Law covers an impressive range of issues, including ticket sales, civil liability and intellectual property rights. A lot of ink was spilt with regard to trademark protection.
FIFA is granted sui generis treatment concerning prosecution of its trademarks. According to the law, the Brazilian National Institute of Industrial Property (INPI) will immediately publish recognition of all of FIFA’s official symbols and trademarks as highly renowned and well known. A highly renowned trademark in Brazil is granted protection in all fields of activity, while a well-known trademark is granted the protection of Article 6bis of the Paris Convention. Such recognitions apply not only to trademarks filed or registered by FIFA but also to a list of trademarks that has yet to be submitted by the Federation to the INPI.
Moreover, a fast-track procedure was created to be applied to all of FIFA’s applications, as well as to all third-party applications that may conflict with FIFA’s rights. The fast-track procedure includes special time periods for oppositions, responsive statements, appeals, nullity actions and even INPI decisions, which will affect the daily activities of trademark practitioners. For instance, if FIFA opposes an application, the owner must file its rebuttal in 30 days; if the application is rejected, the owner must file an appeal in 15 days. In both situations, the normal procedure would give the applicant a 60-day time period.
The law also exempts FIFA from all the official fees connected with trademark prosecution. These changes, however, are still on hold, awaiting issuance of the INPI’s regulations.
Another highlight of the law provides that Brazilian Internet authorities will reject, ex officio, requests for registration of .br domain names consisting of or containing FIFA trademarks.
Two new criminal sanctions were created by the law to prevent infringement of FIFA’s trademarks. These echo the existing sanctions under the Brazilian IP Law. The forms of criminal conduct are similarly described, and the penalties, which range from one month to one year of detention, are the same as those established by the Brazilian IP Law.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers
are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association