Tag: #brand

Exercising Prior User Rights before Brazilian Courts

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.”

#brand #industrialproperty #intelectualproperty #trademarks Brazil precedence Trademark

My trademark is being infringed. What should I do?

The Industrial Property Law guarantees to the owner of the trademark registration ownership rights and exclusivity of use over the trademark, throughout the national territory. Those rights include the right to ensure the material integrity, positive reputation and image of the trademarks under its ownership.

However, what can the owner do if a third party is improperly using its trademark?

Initially, it is recommended to send an out-of-court notification or a judicial notification to the infringer, with an explanation of the facts and legal arguments that support the application for immediate abstention from use.

In general, prior notification of the infringer has positive effects and is a way of resolving the issue in a friendly manner.

However, if the infringer refuses to refrain from using the trademark, it is recommended that a lawsuit be filed, which may be done independently of out-of-court or judicial notification.

The lawsuit may contain a claim for compensation, because Brazilian law provides that the owner of the trademark is due moral and material damages in case of infringement of its exclusivity right.

So, if your trademark is being infringed, look for an expert. Peduti Advogados is a law firm located in São Paulo, Brazil, specialized in Intellectual Property, with more than 40 years of tradition in the field, offering all services related to the areas of Copyright, Trademarks, Patents, Industrial Designs, Software, Technology transfer and Entertainment Law.

In our team we have lawyers, engineers and technicians specialized in Intellectual Property who are qualified to give a swift and clear answer to our client needs, be they related to advisory or litigation.

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Author: Thaís de Kássia Rodrigues Almeida Penteado, Senior Associate & Head of Litigation at Peduti Advogados.

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#brand #infringment Trademark

The importance of trademark registration in Brazil

Trademark registration protects the interests of the company. Its brands are among the most important assets of a company. When well cared for, a brand can generate a constant inflow of profits through direct or indirect exploitation, as it is the main link between the business and the customer.

Through trademark registration, the following rights are granted: (i) exclusive use throughout the national territory, in its market segment and (ii) the right to prevent unauthorized third parties from making use of the same or similar expressions.

In addition, if the trademark is used without being registered, at any time the company can be forced to stop using by others who were more cautious and registered the mark in the first place.

The trademark also brings credibility to the establishment.

The importance of trademark registration in Brazil

In addition, the trademark allows its owner to license or franchise its business, increasing its income without ceasing to be the owner of the brand.

In Brazil, the registration of trademark takes place before the Brazilian Patent and Trademark Office (BPTO).

The trademark registration must be requested from the BPTO by filling out a specific form, which must be delivered along with the image file.

The procedures may seem simple, but they are not. From the initial research to the chosen categories, the whole process requires extensive practical and theoretical knowledge, which is why Peduti Advogados Associados provides services for depositing and monitoring brands through a highly qualified team.

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Author: Thaís de Kássia Rodrigues Almeida Penteado, Attorney at law, Senior Associate & Head of Litigation at Peduti Advogados.

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#brand Trademark

How maradona’s trademarks were not under his ownership

Diego Armando Maradona, the soccer player from Argetina that passed away on November 25th, 2020, although being worldwide famous and known not only by soccer fans, was not the owner of the brands related to him, such as “Diego Armando Maradona”, “Diego Maradona”, “Maradona”, “Diegol”, “El 10”, “El Diego” e “La Mano de Dios”, registered in Instituto Nacional de La Propriedad Industrial of Argetina.

According to the magazine “Olé”, also from Argetina, the brands are registered under the titularity of the company Sattvica S.A., that is reporterdly controled and owned by Matías Morla, Maradona’s last attorney, and Maradona does not appear in any kind of information of the brands registration.

fonte: ole.com.ar

It is important to highlight that the ownership of the brands by the company does not mean that there was any kind of illegality, bearing in mind that is possible that the soccer player has assigned his rights to the company.

This subject will now be discussed by Maradona’s Family on the inventory process in order to clarify if the brands should be part of the division of Maradon’s assets.

In any case, this situation shows the importance of the regular brand registration, bearing in mind that it is one of the most important and valuable assets owned by someone, such as Maradona’s trademarks.

Maria Luiza Barros da Silveira, December 11th, 2020.

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Lawyer Author of the Comment: Maria Luiza Barros da Silveira

Source: Empresa do advogado de Diego Maradona é dona de todas as marcas do ex-jogador, diz jornal

Source: Una empresa de Morla es la propietaria de todas las marcas Maradona

#brand #industrialproperty #Maradona #soccer #trademarkregistration