Brazilian superior court of justice confirms the possibility of enforcement of trademark applications

by Felipe Dannemann Lundgren

December 01, 2011


The Third Panel of the Brazilian Superior Court of Justice (STJ) recently rendered a decision on Special Appeal No. 1.032.104-RS, published on August 24, 2011, which pacified an apparently simple, yet very important issue for trademark owners.

In a nutshell, the legal question brought before the court was whether the owner of a pending application may assert trade mark rights against third parties or  or  whether, by contrast, the applicant should wait until registration was granted by the Brazilian Patent and Trademark Office (BPTO) before going to court.

On the one hand, under section129 of the Brazilian IP Law    exclusive rights in a mark originate from a registration validly granted by the BPTO. On the other hand, section 130, III of same law entitles a trademark applicant to defend the material integrity or reputation of its mark, even before a registration is granted. 

In the instant matter, the plaintiff had filed an infringement action based on its pending application for trademark “RALA BELA. The main goal of the suit brought  by this plaintiff was to compel the defendant to cease the use of this mark in a similar field of activity. The plaintiff lost at the local court and at the Appellate Court of Rio Grande do Sul. Both decisions were based on the fact that the plaintiff had so far not obtained a registration for the trademark at issue.

In its decision, STJ recognizes that according to section 129 of the Brazilian IP law, the right of exclusive use of a mark is subject to a validly granted registration, however this does not mean that trademark application owners have their hands tied when it comes to the protection of their marks against infringers.

Making reference to the notorious delay in the examination of trademark applications in Brazil, the Court acknowledges that trademark applicants cannot be harmed by the backlog of work of the BPTO.

The court also recalls that the Brazilian IP law contemplates legal measures against acts of unfair competition which are not subject to the ownership of a valid registration granted by the BPTO.

In view of this, the court concludes that the provisions of section 130, III of the Brazilian IP law shall prevail, thus enabling trademark applicants to enforce their rights against infringers, even before the registration is granted by the BPTO.

This decision puts an end to dissenting opinions of some national Appellate Courts and confirms the understanding of the majority of the Brazilian jurisprudence and specialized doctrine.

It certainly represents an important step towards the effective enforcement of trademark rights before the Brazilian courts.   



Felipe Dannemann Lundgren

Advogado, Agente da Propriedade Industrial

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