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Hot Topic – Protection of corporate names and trademark protection

In deciding Special Appeal No. 1673450 / RJ, the Brazilian Superior Court of Justice confirmed its understanding that the protection of corporate names are statewide, while trademark protection is national. Therefore, a prior corporate name is not sufficient to nullify a trademark registration. The companies must also be engaged in the same business activities.

The reasoning was based on the joint interpretation of article 124, V, of the Brazilian Industrial Property Act with article 1.166, of the Brazilian Civil Code, so that an earlier corporate name shall only prevent use or registration of an identical or similar trademark if (a) the parties belong to the same market segment; and (b) the corporate name is protected at national level, by means of registration of the companies’ articles of incorporation in all Brazilian States.

In the case at hand, the appeal was dismissed because the appellant’s corporate name was not registered in all States, the parties acted in different markets, and already coexisted pacifically without causing confusion amongst consumers.