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More on the matter of well-known trademarks

by José Antonio B. L. Faria Correa

June 01, 2011

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In Newsletter no. 30, we commented on the decision of the Superior Court of Justice (SCJ) in the VISA case, raising our concern about the requirement determined in that judgment for a prior declaration of fame to ensure the extension of the protection that the law provides for those trademarks which, having been registered in the appropriate area in Brazil, have attained this quality.

Judging the Internal Interlocutory Appeal lodged by the interested party (VISA International Service Association), the SCJ unanimously reformulated the cited judgment 1) understanding that the existing law does not require the issue of a certificate relating to fame and that sufficient evidence was found in the records that the trademark which was the matter of the dispute did in fact present this characteristic.

The court was particularly impressed by the fact that the BPTO, as demonstrated by the party, had already rejected numerous applications for registration from third parties for trademarks that conflicted with the expression VISA in various classes on the basis of fame.

The Court observed, however, that the extension to the scope of protection that benefits well-known trademarks, in order to prevent the use and/or registration of conflicting signs in different market segments, still depends on proving that the presence of identical or similar trademarks designating products or services that are not competitors is likely to lead to confusion.

The reformulation of the terms of the judgment is evidently most welcome, putting right what has been understood to constitute an inappropriate interpretation of the management of protection that the existing 1996 law established for important trademarks that are designated by the expression “well-known trademarks”.

In any event, in view of the existence of various other judgments and decisions that have adopted the interpretation now taken by the SCJ itself, we maintain our recommendation of caution, it seeming advisable that the recognition of fame be sought wherever possible before the BPTO itself in the area of oppositions to applications for registration or third party registrations through oppositions and administrative nullity procedures respectively.

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José Antonio B. L. Faria Correa

Advogado, Agente da Propriedade Industrial

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