by Rodrigo Borges Carneiro
February 15, 2015
Rodrigo Borges Carneiro
On November 13, 2014, the Brazilian Superior Court of Justice published a digest of principles based on rulings of the court in trademark and industrial property cases.
Under Brazilian law, courts are not bound by such principles, but they are commonly used and cited nonetheless by both lawyers and judges from state and federal courts in motions and decisions.
Among the 22 principles collected for the digest, 18 are related to trademark law. They include matters such as:
•The scope of protection for highly reputed marks—the digest says that a prior proceeding before the Brazilian National Institute of Industrial Property (INPI) is required to prove such marks’ recognition;
•The scope of protection for well-known marks (which are distinguished from “highly reputed” marks in Brazil), including marks without a local registration in Brazil; and
•The scope of protection for weak marks—the digest says that there is no need to prove actual confusion, only likelihood of confusion.
Unfortunately, some of the principles raise questions. The fourth states that “the exclusive right to use a mark is, as a rule, limited by the concept of “specialty,” which states that a mark is limited to the class in which the registration was granted.” Some decisions cited as the basis for the draft of this principle have a more nuanced view—specifically, that the principle of specialty relates to the market segment rather than to the class in which the registration was granted.
Another example is the second principle, which states that weak or evocative marks, formed by expressions in common use or generic expressions, cannot be the object of exclusive rights and should coexist with other similar marks. This statement confuses the concepts of generic marks and evocative marks. This is dangerous, as there is a degree of distinctiveness separating generic and evocative marks; the court’s statement will make it harder to protect evocative marks in court actions by equating them with generic marks.
As the courts are not bound by the interpretations, practitioners will still have the ability to argue around them.