The trademark ZUL for parking operations is cancelled since it can be confused with Zul Digital

The trademark ZUL for parking operations is cancelled since it can be confused with Zul Digital

Federal judge Marcelo Leonardo Tavares, of the 31st Federal Court in Rio de Janeiro, granted a nullity action to cancel the registration for the trademark ZUL. The claim was filed by a company that operates its services  with the trademark Zul Digital.

The judge concluded that the registered trademark ZUL practically reproduces the trademark Zul Digital, previously used by the Plaintiff; and that both companies operate in the same market segment (parking operations) and are domiciled in the same city, in São Paulo State.

Marcelo Tavares also noted that there were documents attached to the court records demonstrating that the defendant company could not allege to be unaware of the sign ZUL used by the Plaintiff company before the trademark application was filed by the former before Brazilian Patent and Trademark Office [BPTO].

“Allowing the defendant’s interest to prevail, in this case, is allowing undue association by consumers. This is evident through the filing, by the defendant, of a trademack application that was already being used by the Plaintiff months before it was filed and, due to the circumstances of the particular case, could not be ignored by him, since the companies are competitors operating in the same city, taking part in the same accreditation process in the Municipality of São Paulo for the services identified by the trademark being cancelled, that is, paid rotary parking, better known as the Blue Zone.”

According to the judge, the fact that the sign ZUL is weak or evocative to designate parking operation services does not justify the coexistence of identical trademarks in the same market segment.

“It is recognised that a weak trademark has less power to protect its image, but that does not mean that it does not deserve any protection against a practically identical mark to designate the same product or service. It is not appropriate to state, without caution, that weak trademarks always have the burden of coexisting with others, as they should not be forced to coexist with others that are so similar, as in this case.

Thus, in this case, it can be concluded that the defendant’s trademark registration ZUL does not have the power to eliminate the trademark previously used by the Plaintiff with the same term ZUL, since the former could not be unaware of it, even though it is a weak sign.”

Thus, he declared the registration for the word trademark ZUL, belonging to the co-defendant company, cancelled.

The firm Dannemann Siemsen acted on behalf of the Plaintiff, with partner Luiz Augusto Lopes Paulino and lawyer Luís Henrique Portilho de Azevedo working on the case.