Although international agreements and treaties such as the Paris Convention for the Protection of Industrial Property (1883) sets the principles and rules for intellectual property regulation on State members, each country has its sovereignty to legislate on intellectual property among its borders. Therefore, to protect its intellectual property on a specific country an applicant must file a request in this country.
Some countries, such as Brazil, adopt an “attributive” system for trademark protection, which means that a trademark is only protected when registered (with feel exceptions), following a “first to file” rule, that is the register is granted for the applicant who have first filed the request.
In that sense, trademarks which intent to be used worldwide or even used to commercialize goods and services with other countries should file a request in other countries to assure intellectual property protection, or even to ensure that a third party file a conflicting trademark.
A case study of the conflicts that may arouse from the lack of register on other countries has recently started on Brazil. When the internationally famous reality show MASTERCHEF came to Brazil in 2014 its trademark was rejected because an Argentinian company had already filed a request for MASTER CHEF trademark for cuisine presential and online courses.
The Argentinian company recently had filed an infringement lawsuit against the producers and the television responsible for MASTERCHEF reality show. PEDUTI ADVOGADOS is currently working on this case to defend the television channel. No final decision has been issued so far, however this case already highlights the importance of registering trademark on other countries to avoid situations like that.
—
Lawyer Author of the Comment: Pedro Eurico de Souza Cruz Teixeira
“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.”