1. International Law Office - Legal Newsletter
fntellectuaf Property - Br.azil
Court RuJes on Award of Damages for Trademark Jnfringement
Contributed by Moreira Lima, Royster & Ohno Advogados with Steel Hector & Davis LLP
January 7 2002
On September 18 2001 the Paraná State Court of Appeal ruled that a mere presumption of loss
and damages resulting from a trademark infríngement does not lead to an award of damages
unless it is proved.
In the CaSe,(1)Centro Educacional La Salle Sociedade Civil Ltda sought to prevent the defendant
Centro Educacional Senior S/C Uda from using the name of its educational establishment 'Colégio
Canadá', and its apple symbol, which had been in use for more than 30 years in the state of
Paraná. The plaíntiff also claímed compensatíon for losses and damages caused by the
defendant's illegal use of its name.
In íts defence, the defendant clairned to be the legal owner of the narne on the basis of its
tradernark regislration with the Brazilían Patent and Tradernark Office.
Both the lower and appellate courts held thal the defendanl had no ríght over lho namo, relying on
the Paris Convention and Article 126 af Law 9,279/96 (the Brazilian Industrial Property Law),
The Court of Appeal ruled thal public knawledge of lhe plaintiff's name in the specific field of
business granted it rights in its trademark in Brazil, even if it had not duly registered the mark with
the Brazilian Patent and Trademark Office. In addition, the court awarded the plaintiff
for loss and damages caused by defendant's infríngement.
The defendanl filed a specíal appeal arguing that the plaintiff had not proved loss and damages
caused to íts business. The appellate court granted the defendant's appeal, holding that loss and
damages should not be awarded unless proved (and not merely alleged) during the relevant phase
af the proceedings.
For turther informatíon on thís topíe please eontaet Eriea Aokí at Moreira Lima, Royster & Oflno
Advogados wíth Steef Heetor & Davis LLP by te!epflone (+55 11 2832077) or by fax (+55 11 283
2078) or by emaí! (eaoki@stee!hector.com).
Enclnotes
(1) REsp 316.275 - PR (2001/003982-2) - 4a T - j, September 18 2001 - Rei Min Ruy Rosado de
Aguiar.
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