por Roberta Xavier da S. Calazans
24 de maio de 2012
After a long legal process, Viacom, one of the world’s largest media companies, has successfully recovered the domain name www.nick.com.br, for the company’s global kids entertainment brand Nickelodeon, following a recent decision by the Court of Appeals of the State of Mina Gerais. The decision rendered by the Court calls for attention in two main aspects.
In addition to recognizing trademark rights on decisions involving domain names, particularly when relating to famous expressions, it acknowledged special rights derived from what the doctrine calls “family of trademarks”.
According to the Court’s decision, the existence of a family of trademarks should be afforded special protection, as confusion as to source or sponsorship would be more likely to occur under such circumstances. In the action, Viacom proved ownership, in Brazil, over several trademark registrations composed by NICK as their central element, so that the public would be more easily misled by Defendant’s use of the domain name.
According to the Reporter Judge: “the domain name is its digital identity, it is how the business will be known and, more importantly, how it will be recognized in the Internet. An important step to protect a trademark is registering it in the intellectual property offices of the markets and countries in which it intends to operate”.
Companies like Viacom face an increasing threat from people and organizations around the world that grow and develop their illicit business through trademark infringement and theft of intellectual property rights.
This Court decision recognizes the damages caused by cyber-squatting cases and reaffirms the importance of a thorough protection of strategic trademarks globally and maintenance of a solid portfolio.