Cyberpirate wrecks in Brazil

After 10 years of a judicial dispute, Brazilian animation fans may now rejoice, as the domain name www.nick.com.br has finally been recovered by its true owner: the famous TV channel NICKELODEON, a.k.a NICK.

During the last decade, VIACOM had to adapt   itself to the harder-to-access address www.mundonick.com.br, to permit its public to communicate with their famous and beloved characters.

The decision rendered by the Court of Appeals of the State of Minas Gerais 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”.

This is another clear-cut cyber-piracy case, repelled by the Brazilian courts and which reaffirms the importance of a thorough protection of strategic trademarks globally and maintenance of a solid portfolio.