After years of litigation, a dispute involving the INSULFILM trademark and Renault in Brazil has come to an end, with the court finding liability for the unauthorized use of the trademark.
The dispute arose from Renault’s advertising campaigns promoting new vehicles that included window films as a complimentary feature upon purchase. The marketing materials featured the INSULFILM trademark in a manner that led consumers to associate the products offered (window films) with those of the rights holder. In fact, however, the window films used were not INSULFILM products, and no authorization had been granted for use of the mark INSULFILM in the advertising materials.
In its defense, Renault argued that “Insulfilm” had become a generic term for automotive window films, and that the rights holder should therefore bear the consequences of its widespread use in the market. Brazil’s Superior Court of Justice (STJ), however, rejected this argument and upheld. the ruling that infringement had occurred.
The decision reinforces that trademark protection is not automatically lost simply because a sign becomes widely known or commonly used by the public to identify a particular product category. As long as the mark remains valid and distinctive, its unauthorized use in a commercial context may constitute infringement, particularly where it is used to promote products or attract consumers.
The case also highlights the economic value of trademarks as intangible assets and underscores the importance of their proper protection and strategic management. Registration is only the first step; rights holders must also actively monitor and enforce their rights in order to preserve the distinctiveness and commercial value of their marks.
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Advogado(a) autor(a) do comentário: Fernanda Carmagnani Rodrigues, Lígia Ferreira Marcondes Rocha, Cesar Peduti, Peduti Advogados
Fonte: STJ reforça proteção à marca Insulfilm e reacende debate sobre propriedade intelectual no Brasil – https://bmcnews.com.br/empresas-e-negocios/stj-reforca-protecao-a-marca-insulfilm-e-reacende-debate-sobre-propriedade-intelectual-no-brasil/
Marca Insulfilm: STJ veta uso como chamariz e impacta valuation – https://www.spacemoney.com.br/economia/stj-protege-marca-insulfilm/
STJ brings INSULFILM and Renault dispute to an end – https://globallegalchronicle.com/post-235856/
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If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.