In a recent lawsuit in a court in the state of São Paulo, the claims were granted based on the recognition that the trademark registration duly granted before the BPTO takes priority over any previous use of the trademark.
In this particular case, the plaintiff, Haras Rosa Mystica, obtained the registration of its mixed trademark “POTRO DO FUTURO” on December 19, 2017. In light of this, it filed a trademark non-use action against the Brazilian Quarter Horse Breeders Association, alleging unauthorized use of the mark. However, in its defense, the defendant claimed that it has been using the expression “POTRO DO FUTURO” since 1976, that is, prior to the plaintiff’s trademark application.
Meanwhile, despite the defendant’s evidence of prior use, the judge held that, under the Industrial Property Law, the protection granted by the BPTO to the holder of a duly registered trademark prevails over the use of an unregistered mark, even if thet use is prior the registration. As an addition, the judge states that the defendant’s prior use of the expression has no legal support.
Article 129 of the Brazilian Industrial Property Law (Law No. 9.279/96) states that ownership of a trademark is acquired by valid registration. Consequently, only trademark registration can guarantee exclusive rights.
However, the provisions of paragraph 1 of this same article must be taken into account which rules “Every person who, in good faith, on the date of priority or filing, has been using in the country for at least six (6) months a mark identical or similar to distinguish or certify an identical, similar, or related product or service, shall have the right of precedence in registration”.
It is important to note that the legislation acknowledges prior use and grants good faith users who were already using the trademark before others filed for registration a guaranteed, yet limited, right to continue using the trademark, based on their right of precedence.
In view of this, it should be noted that the judge’s decision can be appealed in order to review the sentence, since, even though the plaintiff’s trademark registration has been duly granted, guaranteeing it ownership rights over the trademark, the defendant had been using the trademark for at least 30 years before it was filed by the plaintiff, and therefore was acting in good faith, which also guarantees it the right of precedence, even if it is not exclusive.
This case opens our eyes to the different interpretations there may be of the current legislation. However, with good local advice, we must always protect the rights guaranteed to trademark users by law. In addition, the importance of timely registration and constant monitoring of the use of the trademark in the market is clear, in order to avoid future conflicts.
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Author: Daniela Russo, Pedro Zardo Júnior and Cesar Peduti Filho, Peduti Advogados.
Source: Registro no INPI prevalece sobre uso anterior de marca, decide TJ/SP – https://www.migalhas.com.br/quentes/431276/registro-no-inpi-prevalece-sobre-uso-anterior-de-marca-decide-tj-sp (se tiver)
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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.”