Monday, 11 March 2013

Trade Mark: revocation is operative from the day of declaration – no retroactivity can be sought

Brazilian Superior Court of Justice (STJ) has upheld a decision that determined the National Institute of Industrial Property (INPI) to proceed to the registration of the trade mark Lyon, required by the company 'Calçados Only Ltda.'

Background of the case
Back in 1995 the company named ‘Calçados Only’ applied for the registration of two trade marks containing the words ‘Lyon’, for shoes. INPI denied registration on the grounds that the mark was similar to ‘Piernas Lyon Dor’.
'Calçados Only' appealed to the decision on the grounds that the marks were capable of coexistence - it did not suceed. Moreover, parallel to this, the company brought another action i.e. revocation of the mark for non-use.

These cases were heard by the 5th Federal Court of the Judicial Section of Rio Grande do Sul and later on by the Federal Regional Court of the 4th Region holding that INPI should proceed to registry the mark applied for by 'Calçados Only'.

INPI appealed to the decision on the grounds that company brought the action of revocation four months after the publication of filing their applications for registration and two months after the filing of the suit. There were not effects from such revocation of the earlier mark during the course of judicial proceedings, as this was only recognized after the closure of the administrative processes that denied the request of 'Calçados Only'.
 INPI based its case in the principle of no retroactivity. INPI argued that the subsequent declaration of revocation does not reopen the administrative proceedings or lead to the merits of the lawsuit, which was filed on the grounds that there would be no confusion between the marks. However, INPI affirms that such a declaration ie revocation to the oldest mark, opened the opportunity to submit a new application for registration.

At the STJ
In considering the appeal, the court cited a precedent from the Supreme Court's Second Section (EREsp 964 780), in which it was determined that "the revocation of a trade mark, due to lack of use, and/or enjoyment by the owner, has legal effect from its declaration (ex nunc) instead of retroactively (ex tunc) ".

Nice combo! but are they the same?
The STJ noted however that the case was based on the absence of confusion between the marks - and not in the revocation of the earlier mark. The Federal Regional Court of the 4th Region recognized the right of Calçados Only and acknowledged that the company had from the beginning the right to obtain the registration of its trade mark. Accordingly, the expressions Lyon and Lyon Dor (part of the name Piernas Lyon Dor) evoked different things; besides, the trade marks identified products aimed at different markets: shoes in first case and socks in the second [OK, they are not equal; but are they similar? I am afraid for a trade mark case, they are not similar because they are not really competing products. Moreover, we could see perhaps association in here, but this is not enough since there is the need of actual confusion].

Source STJ.

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