Rio de Janeiro Federal Court: judicial decision reaffirms the first-to-file principle in trademark dispute

Rio de Janeiro Federal Court: judicial decision reaffirms the first-to-file principle in trademark dispute

In a decision handed down on June 13, Judge Celso Araújo dos Santos, of the 13th Federal Court in Rio de Janeiro, denied the request to annul the decision of the Brazilian Patent and Trademark Office (BPTO), which rejected the applications for registration of the “Triunfo” trademark on the basis that in Brazilian trademark law the principle of first-to-file is obeyed, i.e. whoever applies for registration first is entitled to the trademark, even if there is another company that has been using a similar label for longer.

The dispute involved the use of the TRIUNFO trademark by two companies in the alcoholic drinks industry, specializing in sugar cane spirits. The plaintiff company tried twice to register the the name Triunfo, for alcoholic drinks, before the BPTO, without success. The BPTO, in turn, rejected the applications based on the existence of previous registrations for the similar trademark “Triunpho”, for the same products, which had been granted to another company in 2016. From then on, the plaintiff sought judicial annulment of the administrative acts that rejected the applications for registration of the “Triunfo” trademark on the basis of these prior registrations.

In the judge’s opinion, the BPTO’s rejection on the basis of art. 124, inc. XIX of law 9279/1996, Brazilian Industrial Property Law, is absolutely correct, since the marks in question mark identical products, namely alcoholic beverages, especially brandies. Furthermore, the plaintiff’s TRIUNFO trademark fully reproduces the trademark nucleus of the previous registrations – TRIUMPHO – since, despite the slight graphic distinction, the pronunciation of both words is identical, as is their meaning, emphasizing that it is an undiluted word or one in common use in the segment in which it is inserted.

Also, regarding the likelihood of confusion or undue association on the part of the consuming public, according to the decision, the differences between the graphic representations of the companies’ registrations would not have the power to endow the plaintiff’s registration with sufficient distinctiveness, not least because the defendant company is also registered under a nominative presentation.

In this sense, in upholding the BPTO’s prior judgement and denying the plaintiff’s request, the judge held that although the plaintiff company had claimed to have been using the trademark since the 1940s, “Brazilian legislation has adopted the attributive system, in order to assign ownership of the trademark through registration, which is granted to whoever first files an application with the INPI, in what is known as the principle of anteriority, or first to file. And, in the case at hand, priority of use over the term TRIUMPHO belongs to the defendant company, which previously filed registration for its trademark.”

The decision can be accessed via the link: Processo nº 5066519-91.2023.4.02.5101

Note: For quick release, this English version is provided by automated translation without human review.