Lack of rights precludes trademark agreement
The Federal Court of Appeals for the Second Circuit has held that an agreement between Natura Lta and L'Acqua di Fiori to settle their trademark dispute was not valid because Natura's registration was, in fact, null and void (Case 95.02.19308-3).
Natura, owner of the UVA-B mark in relation to sun-block, filed an action before a civil court alleging that L'Acqua had infringed its trademark rights by manufacturing and distributing a similar product with a similar name. L'Acqua counterclaimed by filing an action to have Natura's trademark registration cancelled on the grounds that 'UV' (ultraviolet rays) is a technical term commonly used in relation to sun-block.
Subsequently, Natura and L'Acqua settled their dispute, agreeing to withdraw both actions. The civil court concurred. However, the Brazilian Patent and Trademark Office (PTO), which was a co-defendant in the case, appealed.
The Federal Court of Appeals sided with the PTO, holding that there is an absolute prohibition against the registration of a technical term as a trademark. Natura's registration of UVA-B was therefore null and void, and could not be the object of an agreement with L'Acqua.
Rodrigo Borges Carneiro, Dannemann Siemsen Bigler & Ipanema Moreira, Rio de Janeiro
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