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  1. 1. Inlernalional lIe.s Territoriality of notorious macks _,_.. ,_~_~ __ _,,~ ~ .." _ ~._,.The Third Panel of BtazilianSuperior Court Questions ofof justice ruled that a prior trade name has On july 17, 2001 the Superintendent of legal grounds to oppose a trademark Industry and Commerce rendered his interpretation on soundapplication even in case it is not in direct opinion regarding the territoriality of a trademarks •.... .... .. .... _.. ~__competidon with the first.The court ruled notorious trademark. According to this Duteh Supreme Court.July 13,2001that although trademark rights may not official,in order to recognise the notoriety Inthe case of Shie1d Mar!< v Kist me questiongrant proteetion to goods in different of a distinetive sigo it is necessary to prove of Iaw is whether or not Article 2 of meclasses. trade name protection is broader that it is notorious in any of the countries European Trademark Directive doesand covers any market segmento members of the Andean Community oppose the registration of sounds as such The appellate court granted the exclusive (Venezuela, Colombia, Ecuador, Peru and and if not, in what manner sounds have toright to Maeda S/AAgroindustrial aver the Bolívia).Ifthe notoriety of a distinctive sigo be registered. In mis case me Dutchtrademark AGROPEMand determined that has been declared by a non-member Supreme Court has referred to meVirbac do Brasil Indústria e Comércio country of me Andean Community, the European Court of justice questions ofshould cancel its trademark application. Superintendence of Industry and interpretation whether sounds are eligibleMaedas produets and services are related Commerce is not compelled to recogoise for registration as a seed and plants. Vibracs produets and it. In this sense, the Superintendency of Shield Mark is the rightful daimant of 14services are related to veterinary drugs. Industry and Commeree establishes that, trademark registrations, registered with me The appeIlate court decision is based on according to Decision 486 of me Andean Benelux Trademark Office. Amongst thosethe Section 8 of the Paris Conventioo.Trade Community, a notorious sigo is only one fourteen trademarks the first nine notes ofnames do not need to be registered to be that has been declared as notorious in any Für Bise, 1<u1<elekuuuuu (cock-a-doodle-protected in ali countries of the Uniao. of its member countries. doa; crowing of a cock) and the consecutiveAlso,the court held that the faet that Maeda notes e, d sharp, e, d sharp, e, b, d, c, a arehas changed its trade name did not weaken registered by Shield Mark as soundits rights. trademarks. The defendant, Mr Kist,started Maeda S/A Agroindustrial was On August 28, 2001 the Superintendent of an advertising campaigo on january I, 1995established in 1976 as Agropem Agro Industryand Commeree rendered his opinion wherein he uses the melody consisting ofPecuária Maeda and applied for registration regardingthe possibility sendingdocuments me first nine notes of ror. Etise. This ofof the trademark MAEDAAGROPEM in online related to trademark registrations.AlI melody is also played as a telephone same year. Vibrac applied for the documentation pertainingthe registration Moreover, this melody is playedwhen Kistsregistration of the trademark AGROPEM of trademarks can be submitted onIineexcept magazines are taken out of displays,placed20 years later. mose in whichpower of attorneys are granted in bookstores and kiosks. Maeda started with a long judicial battle or legalremedies are filed.In these cases,it is Although the Court ofAppeal stated thatand had its exclusivity right granted by necessary that the attomey appears before Article I of the Benelux Trademark Actthe lower court. The Court of Justice me Superintendency of Industry and (which corresponds to Article 2 Directive)reversed the decision of the first instance Commerce and personally file those does not oppose the registration of soundruling that a trademark must be documents. Accordingly,even though that marks, it held that Shield Marksconsidered well-known to enjoy most ofthe trademark registrationproceeding registrations cannot be considered valid. Itprotection in different market segments. can be handledon tine,there are speeificcases therefore dismissed Shield Marks appeal.Maeda appealed against the decision in which it is necessary the personal Shield Mark appealedto the Supremec1aiming Iikelihood of confusion due to presentation of the attomey before me Court and raised me question under whichthe similarity of consumers and Iikelihood Superintendenceof Industryand Commeree. circumstances a registration is valid underor association. Theabove two items were contributed by the Directive. Erica Aoki, partner, Moreira Uma, Royster & Fernando Triana, Triana Uribe & Michelsen, In pursuance thereof the Supreme Court Ohno with Steel Heaor E Davis. Soa Paulo Bogota. submitted the following questions 01 interpretation to the European Court 01 justice: I. Does Article 2 Directive require to bE interpreted in a way that it opposes thE consideration of sounds as trademarksi If me answer to question Ia) ís in thE