The 1st Chamber of Business Law of the São Paulo Court of Justice has ruled in a new decision saying that the use of a common expression in a company’s trade name is not capable of creating confusion or association because it lacks distinctiveness and originality.
This decision came about after the plaintiff, the owner of a trademark containing the expression “melanina”, which means “melanin” in Portuguese, filed a lawsuit against a certain establishment that used this term in its trade name.
In excerpts from the decision, the judge states that:
It is, in fact, a common noun, designating a substance that gives pigmentation to the skin. In view of this, there is no way of recognizing any kind of infringement arising from the trademark used by the appellee, since the designation does not denote full equivalence to that registered by the appellant.”
It should be emphasized that Brazilian Industrial Property legislation, in its article 124, item VI, states that signs of a generic or common nature are not registrable as trademarks, unless they are sufficiently distinctive. In this sense, we can say that the decision was the right one to allow the brand and the establishment to coexist.
Meanwhile, owners of trademark registrations must always guarantee their rights and always aim to protect their trademarks that are sufficiently distinctive, always paying attention to the requirements set out in the legislation to guarantee ever broader protection. Otherwise, the trademark may be diluted and non-exclusive use by third parties is permitted.
—
Autores: Daniela Russo, Advogada Junior e Cesar Peduti Filho, Peduti Advogados
Fontes:
—
Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.