In a legal dispute between two coffee shops using similar names – QUANTO CAFÉ and QUANTI CAFEH – a judge of the 25th Civil Court of Brasilia ruled that the earlier registration of “QUANTO CAFÉ” before the Brazilian Patent and Trademark Office (BPTO) takes precedence. Consequently, the second establishment was ordered to cease using “QUANTI CAFEH” trademark, under penalty of a daily fine.
In the present case, it was stablished that the “QUANTO CAFÉ” trademark had been previously applied for and granted by the BPTO, whereas the application for “QUANTI CAFEH” had been rejected on the grounds of similarity to the former, however, its owner continued to make improper use of the trademark.
The Brazilian Industrial Property Law sets forth, in Article 124, a comprehensive list of prohibitions regarding what cannot be registered as a trademark. Specifically, item XIX stipulates that imitation or reproduction of already registered trademarks must not be registered, as shown below:
Art. 124. The following are not registrable as trademarks
XIX – reproduction or imitation, in whole or in part, even with addition, of a previously registered trademark, intended to distinguish or certify identical, similar or related products or services, likely to cause confusion or association with the existing trademark;
The court’s decision adhered to the applicable legislation, safeguarding the rights of the owner of a trademark duly registered before the competent authority. This ruling also served to prevent the dilution of the trademark and curb acts of unfair competition.
Decisions like this are important to demonstrate to third parties that the improper use of registered trademarks is repudiated, whether in the letter of the law or in judicial and administrative decisions. Trademark owner are entitled to have their rights guaranteed and respected, acting against infringers to uphold the integrity of their brands when necessary.
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Autores: Daniela Russo, Lígia Ferreira Marcondes Rocha e Cesar Peduti Filho, Peduti Advogados
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“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”
