STROHEIM & ROMANN protected despite lack of Brazilian registration

In Stroheim & Romann Inc v Glove Comercial Importadora e Exportadora Ltda (Case 96.0075145-5), the Federal Court of First Instance for the State of Rio de Janeiro has upheld a claim for cancellation of the defendant's Brazilian registration of STROHEIM & ROMANN. The court held that although the plaintiff does not own a registered trademark in Brazil, it has a number of registrations for the mark STROHEIM & ROMANN in other countries and it is therefore protected by the Paris Convention for the Protection of Industrial Property.

Stroheim & Romann Inc, a US-based textile manufacturer, registered the mark STROHEIM & ROMANN in the United States in 1901 and has been using it since 1907. Its activities have expanded over the years and the mark is now registered in more than 20 countries.

Stroheim filed an application to register the mark SR STROHEIM & ROMANN in Brazil for, among other things, textiles. It also authorized a Brazilian company - Giulian Bass Interiors - involved in the importation of Stroheim's goods to use its mark in Brazil under a licensing agreement. Following the application to register the mark, Glove Comercial Importadora e Exportadora Ltda, a Brazilian company located in São Paulo, sent a cease and desist letter to Stroheim requiring that Stroheim cease all use of the STROHEIM & ROMANN mark in Brazil. Glove based its demand on two Brazilian registrations for STROHEIM & ROMANN for textiles and import and export services that it had secured in 1994.

After failing to come to a settlement with Glove, Stroheim filed a court action requesting the cancellation of Glove's registrations. Stroheim argued that since its mark is registered in a number of countries and is well known throughout the world, it should be protected under Articles 6bis, 8 and 10bis of the Paris Convention.

In its decision, the Federal Court of First Instance for the State of Rio de Janeiro agreed with Stroheim and ordered the cancellation of Glove's marks. It held that although Stroheim does not own a registered trademark in Brazil, its mark is well known and should be protected under the Paris Convention. It also noted that Glove had registered marks reproducing Stroheim's commercial name, in turn made up of the surnames of the founders of the US company, without authorization.

As this is a first instance decision, it may yet be appealed to a higher court.

Denis Allan Daniel, Daniel Advogados, Rio de Janeiro