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State Court cannot declare the nullity of the trademark registration affirmed by the Federal Court, even if incidentally, says STJ.

The 3rd Panel of the Superior Court of Justice (“STJ”) understood that the State Court cannot declare null a trademark registration recognized by the Federal Court1. The decision of the Minas Gerais State Court of Justice set that it is not possible to grant exclusive right over the trademark “Bristol”, since its registration before the Brazilian Patent and Trademark Office (“INPI”) would have been cancelled after the filing of the infringement lawsuit, and also because the trademark would remain generic, even after revalidated by the nullity lawsuit before the Federal Court, therefore, it woud be subject to free use by the defendant.

According to the claimant BRISTOL ADMINISTRACAO DE HOTEIS E CONDOMINIOS LTDA (“Bristol Administração”), the State Court of origin incidentally declared null the registration of its trademark “Bristol”, since it discarded the exclusivity to identify the hotel services, which would not be possible in view of the lack of jurisdiction of the State Court, in addition to the fact that the Federal High Court of the 2nd Region (“TRF-2”) would have reinstated the validity of this registration, whose effects were not considered by the appealed decision.

In the judgment of the Special Appeal, the Reporter Justice Paulo de Tarso Sanseverino highlighted that the STJ has already a consolidated understanding that the State Court cannot recognize the nullity of the trademark registration based on an infringement lawsuit, under penalty of violation of the Federal Court jurisdiction, pursuant to article 175 of the Industrial Property Law.

Based on that, he emphasized that the State Court of origin incidentally declared the trademark null when disregarded the effects of the valid registration and ignored the exclusive right over the expression ‘Bristol”, violating the Federal Court jurisdiction.

The Special Appeal was granted by an unanimous decision, partially granting the claim, in order to recognize the infringement of the plaintiff’s trademark and to determine that the defendant refrains from using the expression “BRISTOL” as a mark to identify hotel services, alone or with others terms. However, the STJ understood that the defendant may only use the company’s name ORGBRISTOL – ORGANIZAÇÕES BRISTOL LTDA in the State of Minas Gerais, exclusively for the purposes for which it is intended, and not as a trademark.

1 Special Appeal 1.826.832

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