Incidental declaration of trademark registration nullity overruled

Leticia Provedel

“A trademark registration can only be declared void by Federal courts”. Under this statement, the Superior Court of Justice of Brazil has discarded the possibility of incidental declaration of nullity of a trademark registration by a State Judge within an infringement lawsuit in Brazil.

The Court upheld that the impossibility of incidental declaration of nullity would bring no limitation for 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 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 3rd Chamber, by recognizing that the party claiming nullity has opted to ignore the trademark registration in force and decided 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, damages and losses. 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 authorise the use of a registered mark in commerce and thereafter allow that party, if and when accused of infringement, 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 until its formal and definite cancellation, by the Brazilian Trademark Office administratively, within six months from the date of issuance, of by Federal Courts, within 5 years from registration issuance.

Whereas this decision, of March 13, 2012, has raised highly controversial issues to patent practitioners, by extending this understanding to patents and designs, same has restored the confidence of trademark owners and reaffirmed the benefits enjoyed by those who care to protect their marks in Brazil.

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