The prior user rights aim to guarantee to the user in good faith a certain trademark that has been filed and acquired by someone else.

The §1 of art. 129 of Brazilian Industrial Property Law (Law No. 9,279/96) requires, besides the good faith, proof of use of the trademark to distinguish or certify an identical or similar product or service at least 06 (six) months before the filing of the application.

Since Brazilian law does not stipulate how to exercise prior user rights, especially regarding the place of such claim, whether before Brazilian Patent and Trademark Office (BPTO) or the courts, some precedents provide guidance on how to act. 

In trademark nullity lawsuits in which prior user rights are invoked, BPTO is currently claiming that only administratively would the party be able to require precedence to a trademark registration.

However, the argument does not seem to meet the legislative intent with the §1 of art. 129 of Brazilian Industrial Property Law, nor does it appear to be aligned with the constitutional guarantee of access of the Judiciary.

Brazilian Superior Court of Justice (STJ) has several decisions recognizing the possibility of exercising prior user rights judicially and not only administratively, i.e., “[…] the interpretation that should be made of art. 129, § 1, of Law 9.279/96 cannot be understood as a restriction of means for the exercise of this right, preventing the previous user in good faith from seeking the Judiciary in the face of injury or threat to the right.”.

Nevertheless, STJ repudiates the claim of prior user rights before State Courts, having decisions that determine the contentious jurisdiction of the Federal Courts to analyze the possibility of granting precedence to a trademark registration to any individual or legal entity. In this regard:

However, the defendant could only claim the right of precedence, expressly provided for in § 1 of art. 129 of the LPI, before the BPTO or in its own lawsuit before the Federal Court, so that, if the registration granted to the appellant was annulled, it would be granted the registration of the trademark.

Indeed, as it necessarily implies the cancellation of the trademark already registered, such claim can only be made before the Federal Court, under the terms of art. 175 of the LPI (Brazilian Intelectual Property Law), and the matter cannot be examined even incidentally in the State Court.

Therefore, in addition to the requirements in §1 of art. 129 of the Brazilian Intelectual Property Law (user in good faith and proof of use of the trademark at least 06 months in advance from the filing), the precedents of Brazilian Superior Court of Justice have been admitting the possibility of exercise prior user rights administratively or judicially, as long as the judicial claim is made through a trademark nullity lawsuit, before a Federal Court. 

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Author: Carlos Eduardo Nelli Principe, Associate Lawyer at Peduti Advogados.

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”