Wednesday, 17 February 2010

The LG trade mark and contested priority

The 35th Federal Court, Rio de Janeiro, ruled recently in an action brought by Brazilian company LG Informática Ltda against LG Electrics Investment Ltd and its Brazilian subsidiary (both part of South Korea's LG Electronics Group). The dispute related to the right to use the talismanic initials LG.

According to the court, LG Informática’s earlier commercial name rights gave it priority over the trade mark LG in the field of computers. Reaching this decision, the court (i) cancelled two registrations for the LG mark held by LG Electrics Investment for computer equipment in Class 9, (ii) ordered the National Institute of Industrial Property to reject five pending applications in Class 9 and one in Class 38 for LG, in respect of goods and services related to computer hardware and software and (iii) ruled that the defendants could not register the mark LG in relation to computer software or hardware in Brazil.

Since LG Informática’s priority was limited to the field of computers, the court made no order in respect of LG Electrics Investment's registrations and applications for scientific, medical, dental and veterinary equipment and cellular telephone devices in Class 9.

A second, unrelated court action between the same parties, this time for registrations and applications for the trade mark LG for goods and services in Class 9 in fields unrelated to computers, the same court rejected all LG Informática’s claims, including an application for a general order prohibiting the defendants from using the mark LG in Brazil.

Both rulings are said to be subject to appeal.

Source: INTA Bulletin, vol.65, no.3.

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