by Rodrigo Borges Carneiro
May 05, 2003
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The Court of Appeals for the Federal District has held in a majority opinion that the Brazilian Association of Former Ford Distributors is not infringing Ford Motor Company’s trademark rights in FORD because the association’s name is used for non-commercial purposes (Case 2001.01.1.014235-0).
The association was created to defend former Ford car dealers from alleged acts and omissions by Ford Brasil. Ford initiated a court action claiming that the use of ‘Ford’ in the association’s name infringes Ford’s trademark rights. Ford pointed out that the FORD mark is protected by the Paris Convention for the Protection of Industrial Property, and the Brazilian Constitution and Industrial Property Law.
The Civil Court of the Federal District ordered the association to stop using the mark but denied Ford’s request for damages. Both parties appealed.
The Court of Appeals for the Federal District held that (i) the ex-dealers have the right to identify themselves as ‘former Ford distributors’ as a matter of fact, and (ii) this use is not commercial and, therefore, out of the reach of the protection afforded by domestic law and the Paris Convention.
In a concurring opinion, Judge Silvânio Barbosa dos Santos stated that the association’s use of ‘Ford’ is insufficient to sustain a claim for moral damages, but that a civil action for recovery of economic damages may be filed if the association tarnishes the FORD mark or Ford’s reputation in any way.
In a dissenting opinion, Judge Carmelita Brasil held that (i) the law grants special protection to famous trademarks such as FORD, even in the absence of competition, and (ii) the association’s use of the name has already tarnished the mark. Brasil also found that the name ‘Ford’ – the famous founder of the company – is protected based on personal rights, which are absolute.
Ford has appealed.