Superior Court of Justice Rules on Controversial Dispute Involving Trade Name Mark and Surname

by Rodrigo Borges Carneiro

September 03, 2003


In an unanimous decision, the 3th Panel of the Superior Court of Justice reversed a decision of the Court of Appeals of the State of São Paulo and considered that a company having exclusive rights to a registered trademark and trade name encompassing a surname can preclude the use of the same surname by a third party in a related area even if the partners of the latter company bear the surname in question.

This landmark decision clarifies the conflict between marks and surnames in Brazil which is an area of the law which has been subject to conflicting decisions.

The dispute arose after Agropem Agropecuária Maeda S.A a company engaged in agricultural business owner of trademark registrations for the mark MAEDA and incorporated before the registry of commerce since July 15, 1976 filed a court action claiming trademark and trade name infringement before a Civil Court in the State of São Paulo against Comercial Agrícola Maeda de Itu Ltda a company in a related field of activities which is formed by partners bearing the surname MAEDA and owner of a trademark application for this name.

The decision in first instance was favorable to the plaintiff on the basis of the priority of use and registration of the name MAEDA as a mark and trade name. 

However, the Court of Appeals for the State of São Paulo reversed the initial ruling in a decision which was grounded on a series of precedents which determined that the company who opts to use a surname as a mark and as a trade name should bear the burden of coexistence with other companies which have partners with the same surname as the right to use a surname is a personal right. 

An special appeal was filed by Agropem Agropecuária Maeda S.A before the Superior Court of Justice claiming infringement of article 8 of the Paris Convention dealing with the protection of trade names combined with articles 124 and 129 of the Industrial Property Law 9279/96 which preclude the registration of a mark composed by a trade name of a third party and afford exclusive use to the owner of a registered trademark.

The 3th Panel of the Superior Court of Justice in a decision published on November 11, 2002 reversed the decision of the Court of Appeals of the State of São Paulo and enforced the exclusive right to use the mark and trade name MOEDA for Agropem Agropecuária Maeda S.A based on the following reasons:

  • Article 8 of the Paris Convention does not exclude surnames from the protection afforded to trade names and the only criteria for deciding conflicts should be priority in adoption;

  • The Plaintiff has the priority in registration of the term MAEDA as a trade name before the registry of commerce;

  • The main purposes of the protection of trade names and trademarks are to avoid unfair competition, unjust enrichment and the likelihood of confusion to consumers and therefore a similar name should not be allowed to coexist if confusion is possible even if the partners of the latter company bear the surname;

  • The valid trademark registrations in the name of the Plaintiff provide exclusive use of the term MAEDA as a mark for similar products and services and a pending application is insufficient to preclude the protection.
A cautionary note should be added as the above controversy arose from a case which was brought before the entry in force of the current Civil Code on January 11, 2003 and which provides that the use of the name of the partners is mandatory for companies incorporated under the unlimited liability regime and optional for limited liability companies.

Moreover, article 1163 of the Civil Code determines that the name of a businessman should be different from other names already registered and its sole paragraph further clarifies that in case of a businessman with an identical name to other already registered an additional designation shall have to be added in order to differentiate the registered names. 



Rodrigo Borges Carneiro

Advogado, Agente da Propriedade Industrial

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