Review of Trademarks in 2011 I - Litigation Area - Judiciary

By Rodrigo Borges Carneiro

Amongst the decisions in trademark cases in 2011, we highlight the following:

1. The reformulation of the previous opinion of the Superior Court of Justice (Court of Appeals) in the case involving trademark VISA giving precedence to the view that the current law does not require the issuance of certificates for the grant of special protection for highly reputed trademarks . The decision was taken at the Interlocutory Appeal of Special Appeal No. 954.378- MG (2007/0110732-3), with its Judgement of April 14th, 2011.

The reporting judge, Justice João Otávio de Noronha, concluded that a trademark duly registered at the BPTO has special protection in all fields of activity once its high reputation and the possibility of confusion with another trademark has been proven, even if the companies concerned are engaged in distinct areas, have a specific clientele and their respective products are unrelated. The reporting judge's position was accepted unanimously.

 2. Decision of the Third Chamber of the Superior Court of Justice (STJ), on the judgment of Resp. No. 1,032,104,-RS, published on August 24th, 2011, clarifying theunderstanding to the effect that holders of applications for trademark registrations still under examination by the BPTO may file a lawsuit against a third party to protect their rights to exclusive use.

The decision is important because it clarifies that holders of applications for registration at the BPTO have protection and can prompt the judiciary to curb violations protected by Section III Article 130 of the Industrial Property Law.

Referring to the notorious delay in the examination of applications for registration by the BPTO, the Court recognized that holders of applications cannot be impaired by the slowness and backlog of work at the BPTO.

3. Decision of the Second Section of the Superior Court of Justice, by majority, at Divergence Appeal Resp. 964.780-SP clarified the matter concerning the effect of the lapse of a registered trademark. The decision determined that it should be effective from its declaration (ex nunc), rather than retroactively (ex tunc).
 
The Section found that the defining of the effect of the lapse for the future is the more appropriate for the purposes of trademark registration, since it provides greater legal certainty for economic agents and discourages counterfeiting.

The reporting judge, Justice Nancy Andrigui noted that ex tunc effects would be like a "sword of Damocles" over the heads of economic agents, being contrary to the spirit of the law and inspiring general distrust in the trademark system.

In the Judicial sphere an important development that occurred in 2011 was the creation by the Special Body of the Justice Court of São Paulo of the Business Reserved Chamber with jurisdiction over matters of Business Law - dealt with in Articles 966 to 1,195 of the Civil Code – of the Corporation Law (Law 6,404/76) and of the Industrial Property Law (Law 9,279/96).

The specialized panel, approved in February, has the following members: Justices Manoel de Queiroz Pereira Calças, Romeo Ricupero, José Reynaldo Peixoto de Souza, Ricardo José Negrão Nogueira and Enio Santarelli Zuliani. Trials are held on Tuesdays, from 9:30 am and are fortnightly.

The effects of the creation of the specialized panel have already begun to be felt in 2011, but by 2012 there should be a further decrease in the duration of appeals in the industrial property area.