The Regional Federal Court of the 2nd Region (TRF-2) ruled that prior knowledge of a trademark registered abroad is sufficient to cancel a registration in Brazil. The case involved the Australian brand “Deus Ex Machina”, which, after discovering that a Brazilian company had registered the trademark in bad faith, managed to cancel its registration in Brazil.

The decision was based on article 124 of the Industrial Property Law (IPL), which protects foreigner trademarks against unauthorized registrations in Brazil. According to the rapporteur, it is sufficient to prove that one knew or should have known the trademark for the registrations to be declared null and void, regardless of whether it is notoriously known in Brazil or not.

It is surely a sign of an important milestone for our intellectual property system, as it faces abusive practices of misappropriation of trademarks through registrations meant to to unfairly exploit third parties. Therefore, the court reaffirms the protection of international brands in Brazil and curbs the common practice of “squatting,” in which companies or individuals attempt to profit from the registration of trademarks of renowned international companies that have not yet registered them locally.

In addition, decisions like this should increase the confidence of foreign companies in our industrial property protection system by ensuring that they will not be harmed by bad faith attempts of registration. It demonstrates that Brazilian market is also an interesting object of investment, since there is legal certainty and respect for international intellectual property standards, rigorously enforced by the courts.

For companies that wish to operate in global markets, brand protection is a valuable asset, and decisions like this must encourage them to invest in their intellectual property registrations, both in Brazil and internationally. On the other hand, bad faith parties should be aware of their actions, for there is a set of legal strategies to protect the legitimate owners.

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Author: Carlos Roberto Parra and Cesar Peduti Filho, Peduti Advogados.

Source: Ter conhecimento de marca no exterior anula registro no Brasil, diz TRF-2 (https://www.conjur.com.br/2024-set-01/ter-conhecimento-previo-de-marca-e-registra-la-basta-para-anular-registro/)

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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.