In a recent judgment, the 3rd Panel of the Superior Court of Justice (STJ) has positioned itself in the sense that the famous brand without a high reputation does not prevent registration in a different segment based on protection against dilution.
The decision was rendered in reason of the special appeal filed against the decision of the Regional Federal Court of the 2nd Region, which dismissed the appeal filed in the course of action for nullity of an administrative act that rejected the registration request filed on 02/06/1996 to identify clothing and clothing accessories in common use.
The controversy revolved around the need to verify whether the owner of a famous trademark, which does not enjoy high-reputation status, is entitled to protection against dilution.
The appellants alleged, in addition to the jurisprudential agreement, the violation of article 125 of the Brazilian Industrial Property Law (Law nº. 9.279, of May 14, 1996), according to which it guaranteed to brands considered of high repute special protection in all fields of activity, that is, rejecting the application of the principle of specialty.
The Judging Panel considers the fact that at the time the appellants’ trademark was filed, 1996, the defendant had not yet achieved the status of high reputation for its brand, therefore, the recognition of high reputation would not retroact.
The judgment also highlighted that in the case there is no bad faith on the part of the appellants, considering that the brand “Perdigão” has been using for more than 30 years to designate shoes manufactured in the city of Perdigão, in the state of Minas Gerais.
Developments in the local court and instance of origin
In the first instance the action was filed by an individual businessman and a shoe manufacturer and trader – which have operated since 1993 – against the Brazilian Patent and Trademark Office (BPTO) and an important agribusiness company, with the aim of decreeing the nullity of the administrative act that rejected the registration application No. 819.164.119 for the mixed brand PERDIGÃO, in the former class 25:10, filed on June 1996.
The beginning of the authors’ activities took place in the municipality named PERDIGÃO, located in the State of Minas Gerais, and the authors managed to prove that they have used the sign PERDIGÃO as a brand to identify shoes since 1990.
The lower court handed down a judgment that dismissed the action as it understood that the INPI acted correctly in rejecting the trademark and that the case would fall under the modality of dilution called “obfuscation”, considering that, in fact, the use of the term PERDIGÃO to identify products from different sources, even if belonging to different market segments, could violate the material integrity of the consolidated brand, and widely known to the Defendant, especially if considering the degrees of distinctiveness and notoriety of its PERDIGÃO brand.
The Plaintiffs’ appeal had no effect before the Court, which dismissed the appeal and upheld the sentence immaculate, which triggered the filing of the special appeal at the Superior Court of Justice.
Upcoming developments
After the publication of the judgment, the company filed Motions for Clarification in order to provoke the Court’s debate on whether or not PERDIGÃO was a high renowned brand when examining the application for registration for the trademark by the INPI, under the argument that it was not. had the opportunity to prove that its brand had high reputed status as early as 1996, adding that the high reputed declaration was only regulated in 2004, by INPI resolution 110/04 which regulated the application of article 125 of the LPI.
The Motions for Clarification still demand judgment by the Third Panel of the Superior Court of Justice.
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Author: Sheila de Souza Rodrigues, 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.”