Month: February 2019

We were once inquired by a foreign trademark attorney about the possibility of appeal in an opposition decision in Brazil.

To understand the decisions regarding oppositions and the possibility of appeal, it is important understand the trademark application in Brazil. There are countries, where the Trademark office analyses if the trademark can be registered and make a decision and after that publish the trademark for oppositions.

In Brazil, firstly the trademark is published for oppositions and only after that the Brazilian trademark office decides if the trademark can be registered or not. Thus, only one decision is made, stating about the opposition and the possibility of register the trademark.

For this reason, it may seem that there is no appeal from the decision about the opposition. However, if the trademark is granted and the opposition is not accepted, the opponent can file an administrative nullity.  So, the opponent can discuss the grant of the trademark and challenge the decision of the Trademark office.

After that, the Brazilian trademark office can revise its decision and reject the trademark. So, the opponent can challenge a decision that grant a trademark.

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Lawyer Author of the Comment: Laila dos Reis Araujo

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

The news that Mcdonalds lost the “BIGMAC” brand in Europe surprised the intellectual property community. But what really happened?

Initially we need to understand that the “BIG MAC” trademark was registered to identify various products and services, not just sandwiches. “BIG MAC” was also a trademark for meal preparation, restaurant services and franchising.

In 2017 a fast food chain called “SUPERMAC” filed an application for cancellation of the “BIG MAC” trademark owned by Mcdonalds. SUPERMAC is a famous in Northern Ireland and Ireland, but has no presence in the rest of the continent.

According to SUPERMAC, McDonalds used the similarity between the brands to make it difficult for the Irish restaurant to expand its businnes to other countries.

By concluding that the BIG MAC trademark was not being used to identify all the products and services that appear on the registration for a period of five years, the Irish MAC filed an application for the cancellation of the trademark.

In response, McDonalds presented the number of restaurants it owns in Europe, as well as advertising contente used to promote the BIG MAC sandwich and the packaging with the imprinted trademark.

All the evidence presented by McDonalds corroborated the use of the trademark only for sandwiches, without demonstrating that BIG MAC was also used to identify other products and services, such as meal preparation services.

The decision of the European Union Intellectual Property Office complied with SUPERMAC’s claims, concluding that the BIG MAC trademark was not really used in all the categories to which it was granted. Consequently, the trademark was canceled and the exclusivity that McDonalds had finally came to an end.

McDonalds can still appeal the ruling, but while that does not happen, SUPERMAC can continue its expansion plans across Europe.

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Lawyer Author of the Comment: Vittória Cariatti Lazarini

Source

Headline: McDonald’s loses ‘Big Mac’ trademark case to Irish chain Supermac’s

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”