Clarifications on issues involving TM of the World Cup General Law
The World Cup General Law (12.663/12), approved on June 5th 2012, establishes a “special regime” for trademarks filed by FIFA. Among other things, the Law establishes that the Brazilian National Institute of Industrial Property (INPI) will approve the condition of high renowned trademarks, from the list provided and updated by FIFA. However, this procedure involves that the INPI will not require FIFA to prove the condition of high renowned trademark. The special regime will last until December 31st, 2014.
High renowned trademarks have special protection in all fields of activity, according to the Brazilian Industrial Property Law (9.279/96). This exception introduced by the World Cup General Law applies to the cases in which a trademark can, through time, extrapolate the original section in which it was originally intended, due to the quality, reputation and prestige associated with it.
After the approval of the World Cup General Law, FIFA has sent to INPI lists with registered trademarks that it considers high renowned trademarks. Among them, there is the trademark “PAGODE”, which proposes, among other items, typefaces (Pagode is a Brazilian style of music which originated in Rio de Janeiro, Brazil, as a subgenre of Samba at the beginning of the 1980´s). By becoming a high renowned trademark, it will have special protection in all fields of activity. In cases related to the World Cup General Law, the highly renowned trademarks cease to exist on January 1st, 2015.
A trademark right represents an exclusive right in the economical exploitation ofa given sign. In this sense, the term “PAGODE”, in a non-commercial use, is free to be used. Regarding commercial uses, provided it is not confused or associated with the expression “PAGODE” filed by FIFA (or by other companies) it could, in principle, be used.
Currently, the INPI has 126 trademarks with the word “PAGODE”, among applications and granted trademarks.