Prior use of trade name defeats trademark application


The Brazilian Superior Court of Justice has ruled that a prior user of a corporate name (perhaps as part of a domain name) has standing to oppose a trademark application even if it is not in direct competition with the applicant. The court found that even though the plaintiff's trademark could not grant it protection against the defendant's trademark application because of the different market segments, trade name protections are broader, enabling the plaintiff to oppose the defendant's trademark application.

A trade name is the name under which a company conducts its business (including online by the use of a domain name). A trade name can also serve as a trademark, and be granted the associated exclusive rights, if it meets trademark requirements (eg, where the corporation has used the name to conduct business).

Maeda S/A Agroindustrial, a producer of plants and seeds, applied for registration of the trademark MAEDA AGROPEM in 1976. Virbac do Brasil Indústria e Comércio, a producer of veterinary drugs, applied for registration of the trademark AGROPEM 20 years later.

Maeda appealed the lower court's decision that a trademark must be considered well known to enjoy protection in different market segments.

The appellate court granted the exclusive right to Maeda over the trademark because it had used the trademark as part of its trade name. The court, therefore, determined that Virbac should cancel its trademark application.

While this case dealt strictly with trade name and trademark protection, it has implications for e-businesses. If a domain name incorporates a company's trade name, then it is likely that that company will be able to block the domain name and trademark applications by another company using the same trade name.

Erica Aoki, Moreira Lima, Royster & Ohno with Steel Hector e Davis, Brazil

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