An important company specializing in feminine hygiene filed a nullity action of a trademark registration granted by the National Institute of Industrial Property (INPI) to a competing firm
based on Article 6 bis (3) of the Paris Convention (CUP).
According to the special rule laid down in article 6 bis (3) of the Paris Convention (CUP) “No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith (l).”
The monocratic decision welcomed the request formulated by the plaintiff, but the Federal Court of Appeal for the 2nd Region (TRF2) reformed the sentence and concluded that the trademark “Sempre Livre” coexisted peacefully with similar trademarks that identifies and identify and distinguishes the same products composed of the word “Livre” in the market; additionally, that the opposing party has not acted in bad faith when filing the trademark registrations. Thus, the Court has rejected the claim of the right of precedence in registration.
In August of this year, in the judgment of Special Appeal under Specific Court Regulations nº 1.741.532, The Superior Court of Justice – STJ, the highest Brazilian court for standardizing the interpretation of federal law all over the country – confirmed the understanding of the Federal Court of Appeal for the 2nd Region.
In Brazil there are a handful of exceptions to this general rule in the Brazilian Industrial Property Law (Law nº. 9.279, of May 14, 1996), including a “right of precedence in registration” set out in Article 129, Paragraph 1, which establishes that “any person who in good faith had been using an identical or similar mark for at least six months in Brazil to distinguish or certify a product or service that is identical, similar or akin, will have preferential right to registration”.
If your business is using a symbol, word, frase, or combination thereof to identify its goods or services, you should take steps to prevent your competitors from using that distinctive signs in the same way. Your trademark represents the reputation of your business.
It is always advisable to consult a specialist Intellectual Property lawyer to prevent losses and conflicts of interest with other companies.
Do you have any questions about Brazilian intellectual property rights? Contact us.
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Lawyer Author of the Comment: Sheila de Souza Rodrigues
Headline: Fabricante de Sempre Livre não consegue anular marca concorrente
“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.”
The document sent now by the CNI and Amcham has highlighted the advances made by Brazil throughout 2019, among then the announcement of the Plan of Action against patent backlog, which aims to reduce the delay on the analysis of patents, the approval of the adhesion to Madrid Protocol, which will allow applicants to register trademarks in 102 signatory countries through Brazilian Trademark and Patent Office, and a National Plan to Combat Piracy – a important concern mentioned on the 2019 Report.
