The subjectivity of judicial decisions in matters of trademark registration

Understanding the importance of appropriate strategies in intellectual property litigation.

In intellectual property law, the interpretation of the subject matter by examiners and judges is often divergent. In less than three months, two judicial decisions totally contrary to each other were declared. Understand the case and the importance of specialized legal advice.

The applicant of the registrations of a mixed (word + design) trademark in the clothing and footwear industry (international classes 25 and 35), filed a lawsuit seeking to combat the misuse of a trademark identical to his own with the addition of the expression “STORE”. The Defendant company has already had the trademark rejected based on the Plaintiff’s registration in the same international class and, recently, it filed a new lawsuit in the clothing industry (class 40).

The law firm of the case filed the lawsuit in the city of domicile of the Defendant, in the countryside of São Paulo, requesting Injunction and, on 11/22/2023, the Judge rejected the request, considering the trademark element a word of common use and suggestive in the segment, including mitigation; in addition, the magistrate understood that the mixed (word + design) trademark is composed of two signs and figurative elements, which contributes to the differentiation, removing confusion with consumers.

Supported by the Brazilian Civil Procedure Code, which allows the withdrawal of the dispute before the summons of the opposing party, the lawyers withdrew the lawsuit and redistributed it in another Judicial District in the countryside of São Paulo, this time in the city of domicile of the Plaintiff, also with request for interlocutory relief. On 01/24/2024, considering that the application for registration of the Defendant’s trademark had been rejected by the Brazilian PTO, based on the prior registration of the Plaintiff, as well as the danger of damage to the Plaintiff, the Judge granted the injunction, determining the Defendant to abstain from the expression and/or variations, under penalty of a daily fine of R$10,000.00 (ten thousand reais).

Dr. Sonia Carlos Antonio, managing partner of CARLOS ANTONIO, NEVES & VIDAL (CNV Advogados), lawyer of the plaintiff, explains that “the filing of the lawsuit at the plaintiff’s domicile is outside the rule imposed by the Civil Procedure Code (CPC), but is fully applicable in trademark matters”.

The merits of the case have not yet been appreciated. This publication is purely informative and educational, which is why the names of the parties, trademarks and districts were purposely omitted.