Trademark owner triumphs in name dispute
The First Civil Chamber of the Minas Gerais Court of Appeal has ordered Master Credi S/C Ltda to transfer a domain name containing the phrase "lago e ducca" to Lago & Ducca Indústria e Comércio. In addition, Master Credi will be liable for a R1,000 fine if it does not comply with the court's ruling and pay damages to Lago.
The court held that, according to the law, the first party to file a trademark with the Patent and Trademark Office (INPI), or the owner of a registered trademark, is entitled to enjoy all rights associated with that registration, including publication of the mark on the Internet.
The decision clarifies that the use of a third party's name or trademark in a domain name without prior authorization is illegal. It also shows that the court will attribute ownership to the first party to register the trademark with the INPI. However, it is worth noting that the law also extends a preferential ownership right to any party that has in good faith been using an identical or similar mark in Brazil in order to distinguish or certify an identical, similar or related product or service for at least six months at the date of priority or application.
Erica Aoki, Aoki e Farios Advogados Associados, São Paulo
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