Member Article

“A patent, trademark, or design registration
can only be declared void by Federal courts”. Under this statement, the
Superior Court of Justice of Brazil has reaffirmed unanimously that defendants
cannot argue unenforceability of a trademark registration as a defense argument
in an infringement lawsuit.  Therefore,
State Courts shall limit their decisions to IP violation claims, while nullity claims
shall be decided by Federal Courts, at a separate lawsuit to be filed against
the trademark owner and the Brazilian PTO.

The Court upheld that the impossibility of
incidental declaration of nullity before State Courts, would bring no
limitation to the right of full defense, on the contrary – “if a third party
aims to use a mark in commerce, and has reasons to believe that its
corresponding trademark registration is invalid, same must file a nullity
action before Federal Courts, with a request for preliminary injunction, before
starting to commercialize the products”.  The reporting Judge Minister
Nancy Andrigui, who has voted in favour of the incidental declaration of
nullity in past decisions, has reformulated her understanding towards the
position of the majority of the Superior Court of Justice’s 3^rd
Chamber, by recognizing that the party challenging validity has “opted to
ignore the trademark registration in force by taking the decision to use the
mark in commerce, infringing third party’s rights and transferring to the
(assumedly) lawful owner of the registration the burden of filing the
infringement lawsuit and producing evidence of the infringement and damages”. 
According to the decision, copying and using a third party’s registered mark
before taking the necessary legal steps to legitimate such use is against best
commercial practices and therefore not acceptable in a democratic nation.

“It would be overthrowing to tolerate the use
of a registered mark in commerce by an unauthorised party and, if and when
accused of infringement, allow that party to challenge the validity of the
corresponding trademark registration”, declared Minister Andrigui. 

As a result, a trademark registration shall be
deemed valid and enforceable towards all in the territory until it that date it
is formally declared void, at an administrative procedure to be filed at Brazilian
Trademark Office within six months from the date of issuance, or by Federal
Courts, within 5 years from that date.

Whereas this decision, of March 13, 2012, has
raised highly controversial issues to IP practitioners, more specifically as
regards the applicability of this understanding to patents and designs in light
of the Brazilian Intellectual Property Law. Despite, same has restored the
confidence of trademark owners and reaffirmed the benefits enjoyed by those who
care to protect their marks in Brazil.

Leticia Provedel

Partner of Veirano Advogados

[email protected]

 

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