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Contributors: Rafael Lacaz Amaral and Rafael Salomão S.
R. Aguillar, Kasznar Leonardos Intellectual Property, Rio de
Verifier: Flavia Mansur Murad Schaal, Mansur Murad
Advogados, São Paulo, Brazil
Mr. Amaral and Ms. Murad Schaal are members of the INTA Bulletins
Law & Practice—Latin America Subcommittee.
In a decision published on March 3, 2017, the 4th Chamber of the
Brazilian Superior Court of Justice provided the criteria to decide
cases in which identical marks are registered by different owners
as domain names and trademarks (Recurso Especial nº.
Brazil's registry of domain names is fully independent from the
National Institute of Industrial Property (INPI) and Brazilian Law
follows the principle of "first to file" for both domain
names and trademark registration. This inevitably raises the
question of which one shall prevail when there is a conflict
between parallel registrations of the same sign.
The dispute concerned the cosmetic brand PAIXÃO (meaning
"passion" in Portuguese), previously registered with INPI
and the matchmaking services website paixao.com.br. The plaintiffs,
DM Indústria Farmacêutica Ltda. and Papyrus L.L.C.,
claimed trademark infringement and held that the website could not
seek the registration of its prior trademark as a domain name. On
the other hand, the defendants, Fundação de Amparo
à Pesquisa do Estado de São Paulo – FAPESP and
Plano de Serviços de Internet Ltda. – ME, claimed that
the principle of specificity should apply, since the fields of
activity were not the same.
The Superior Court considered in this case that a prior trademark
registration could only prevent a third party from registering a
domain name for the same sign if the brand was a well-known or
highly reputed trademark, or if the domain name could result in
consumer confusion or deception as to the origin of the goods or
services. Bad faith, the possible dilution of the trademark, and
parasitic misappropriation are also factors that can prevent a
domain name from being registered by third parties.
In this case, the court held that no such confusion could arise,
since PAIXÃO was not regarded by the public nor officially
recognized by the trademark office as a highly reputed trademark.
Moreover, and perhaps more importantly, the fields of activity of
the litigating parties were considered different and the justices
held that PAIXÃO was not a very distinctive sign, meaning
that coexistence with similar brands was mandatory. Moreover, many
other trademark registrations containing the word
"paixão" coexist with the plaintiff's
registration in other classes or areas of activities, without any
likelihood of confusion or association with the earlier rights.
Thus, the court ruled against the plaintiff, upholding the
defendant's domain name.
The case sets a very important precedent, as it acknowledges the
independency of both systems while providing the criteria for
solving the inevitable conflicts that arise therefrom. In this
sense, the court indicated that the principle of specificity and
bad faith play key roles in adjudicating such disputes.
This article originally appeared on INTA Bulletin and is
available here: http://www.inta.org/INTABulletin/Pages/Brazil_7210.aspx
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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