The Name of a Condo does not Function as a Trademark

By Rodrigo Borges Carneiro

The Third panel of the Superior Court of Justice rejected a trademark infringement claim brought by the company Baer Empreendimentos S/C LTDA against Compax Buildings based on the similarity of the trademark “AQUAMARINE” registered for “administration, rental and auxiliary services for the real estate business” by the Plaintiff with the name of a condo of apartments named ACQUAMARINA in the city of Rio de Janeiro incorporated by the defendant (Special Appeal 867.067 – RJ). 

The Reporter Judge, the honorable minister Della Giustina Vasco, decided that the name of a condo of apartments does not infringe the intellectual property rights inherent in a trademark.

For the Reporter Judge, the names of buildings or condominiums are not marks or acts of commercial life, but acts of civil life, and cannot be classified as services or products:

"The fact that a company builds a condominium and to particularize the venture gives it a name does not render the act commercial" he explained. "The protection of a trademark registration is restricted to commercial activities such as the rendering of services or commercialization of products and not reflecting on the naming of things,"

Will this decision give a free pass for companies to name condos using trademarks in Brazil?

In “regular” cases of similarity with trademarks I feel that this is exactly what will happen.

However, the incorporation of condos with very famous marks such as ROLEX, FERRARI may still be challenged under other grounds such as unjust enrichment.