Ingresar
More on the matter of highly reputed trademarks
By José Antonio B.L. Faria Correa
Judging the Internal Interlocutory Appeal lodged by the interested party (VISA International Service Association), the SCJ unanimously reformulated the cited judgment1 ruling that the existing law does not require the issue of a certificate relating to high repute and that sufficient evidence was found in the records that the trademark which was the matter of the dispute did present this characteristic.
The court was particularly impressed by the fact that the BPTO, as demonstrated by the party, had already rejected numerous applications for registration from third parties for trademarks that conflicted with the expression VISA in various classes on the basis of high repute.
The Court observed, however, that the extension to the scope of protection that benefits trademarks of high repute, in order to prevent the use and/or registration of conflicting signs in different market segments, still depends on proving that the presence of identical or similar trademarks designating non competing products or services is likely to lead to confusion.
The reformulation of the terms of the judgment is evidently most welcome, putting right what has been understood to constitute an inappropriate interpretation of the system of protection established by the existing 1996 law for important trademarks that are designated by the expression “trademarks of high repute”.
In any event, in view of the existence of various other judgments and decisions that have adopted the interpretation now overruled by the SCJ itself, we maintain our recommendation of caution, it seeming advisable that the recognition of high repute be sought wherever possible before the BPTO itself in the framework of oppositions to applications for registration or administrative nullity procedures against registrations of third parties.
1Internal Interlocutory Appeal n.o 954.378- MG (2007/0110732-3), decided on April 14, 2011
Dannemann Siemsen
Recognised as leaders in Intellectual Property in Latin America, we are a team of experts who has been dedicated to defending industrial and intellectual property since 1900. We operate throughout the world, encompassing first-rate civil and criminal advocacy, covering diverse areas of Law and all segments of industry. We are partners of large national and international companies.
Today we have offices in three Brazilian state capitals and we have gathered a team of practitioners that lead in knowledge of intellectual property, litigation, contracts and other areas of Law.
This allows us to advise our clients in the main legal proceedings, making us a strategic partner in the pursuit of innovation and knowledge.
We have more than 280 lawyers and an extensive team of Industrial Property Agents – an experienced and specialised technical team that is kept up-to-date with the transformations and demands of the market.
We are the support for innovation and knowledge.
We live in a dynamic world, where knowledge is decisive for any company to stand out in the market. We believe in the value of human capital and in creativity as a source of innovation.
With more than a century of experience and a wide range of services, we are proud to be the foundation for our clients to seek innovative and disruptive paths.
