by Rodrigo Borges Carneiro
November 01, 2001
In a recent decision in the action AR 512-DF published on 02/19/2001, the Superior Court of Justice decided to cancel directive abstract n° 142, which provided for a twenty-year statute of limitation for actions to restrain the use of a trademark.
After the cancellation of the directive abstract, two conflicting positions try to answer the question of what is the correct statute of limitation for actions to restrain the use of a trade mark or trade name. According to the first one, since it is a right in rem, the statute of limitation should be of ten years between known parties and fifteen years for absent ones as foreseen in the final part of article 177 of the Civil Code. The second opinion understands that since it is a property right but not related to a right in rem, the statute of limitation of actions to restrain the use of a trademark or trade name should be of five years just as defined in article 178, paragraph 10, item IX of the Civil Code.
It is recommended, whenever possible, to file actions to restrain the use of a trademark or trade name within the five-year term in order to avoid controversies.
Nevertheless, both opinions agree that the statute of limitation for actions for recovery of damages caused by the infringement of a mark trade name is of five years in accordance with the provision of article 178, paragraph 10, item IX of the Civil Code.