Tradenameprotection int


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Tradenameprotection int

  1. 1. I , 1 Internatiànál News :/" f ~ ~ k ~The Territoriality of notorious ~herlan.ds __ marks The Third Panel of Brazilian Superior Court Questions af of Justice ruled that a prior trade name has On July 17, 200 I the Superintendent of legal grounds to oppose a trademark Industry and Commerce rendered his interpretation on sound application even in case it is not in direct opinion regarding the territoriality of a trademarks. competition with the first. The court ruled notorious trademark. According to this Dutch Supreme Court, July 13, 2001 that although trademark rights may not official, in order to recognise the notoriety In the case of Shie/d Mark v Kist the question grant protection to goods in different of a distinctive sign it is necessary to prove of law is whether or not Article 2 of the classes, trade name protection is broader that it is notorious in any of the countries European Trademark Directive does and 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 to right to Maeda S/A Agroindustrial over the Bolivia). If the notoriety of a distinctive sign be registered. In this case the Dutch trademarkAGROPEM and determined that has been declared by a non-member Supreme Court has referred to the Virbac do Brasil Indústria e Comércio country of the Andean Community, the European Court of Justice questions of should cancel its trademark application. Superintendence of Industry and interpretation whether sounds are eligible Maedas products and services are related Commerce is not compelled to recognise for registration as a trademark. to seed and plants. Vibracs products and it. In this sense, the Superintendency of Shield Mark is the rightful c1aimant of 14 services are related to veterinary drugs. Industry and Commerce establishes that, trademark registrations, registered with the The appellate court decision is based on according to Decision 486 of the Andean Benelux Trademark Office. Amongst those the Section 8 of the Paris Convention.Trade Community, a notorious sign is only one fourteen trademarks the {Irst nine notes or names do not need to be registered to be that has been declared as notorious in any Für Efise, kuke/ekuuuuu (cock-a-doodle- protected in ali countries of the Union. of its member countries. doo; crowing of a cock) and the consecutive Also, the court held that the fact that Maeda notes e, d sharp, e, d sharp, e, b, d, c, a are has changed its trade name did not weaken Online registrations registered by Shield Mark as sound its rights. trademarks. The defendant, Mr Kist, started Maeda S/A Agroindustrial was On August 28, 200 I the Superintendent of an advertising campaign on January I, 1995 established in 1976 as Agropem Agro Industry and Commerce rendered his opinion wherein he uses the melody consistíng of Pecuária Maeda ànd applied for registration regarding the possibility of sending documents the first nine notes of Für Elise. This of the trademark MAEDA AGROPEM in online related to trademark registrations. Ali melody is also played as a telephone tune. the same year, Vibrac applied for the documentation pertaining the registration Moreover, thís melody is played when Kists registration of the trademark AGROPEM of trademarks can be submitted online except magazines are taken out of displays, placed 20 years later. those in which power of attorneys are granted in bookstores and kiosks. Maeda started with a long judicial battle or legal remedies are ftled. In these cases, it is Although the Court of Appeal stated that and had its exclusivity right granted by necessary that the attorney appears before Artícle I of the Benelux Trademark Act the lower court. The Court of Justice the Superintendency of Industry and (which corresponds to Article 2 Directive) reversed the decisíon of the first instance Commerce and personally file those does not oppose the registration of sound ruling that a trademark must be documents. Accordingly, even though that marks, it held that Shield Marks considered well-known to enjoy most of the trademark registration proceeding registrations cannot be considered valid. It protection in different market segments. can be handled on line,there are specific cases therefore dismissed Shield Marks appeal. Maeda appealed against the decision in which it is necessary the personal Shield Mark appealed to the Supreme c1aiming likelihood of confusion due to presentation of the attorney before the Court and raised the question under which the similarity of consumers and Iikelihood Superintendence of Industry and Commerce. circumstances a regístration is valid under of association. The above two items were contributed by the Directive. Erica Aoki, partner, Moreira Lima, Royster & Fernando Triana, Triana Uribe & Miche/sen, In pursuance thereof the Supreme Court Ohno with Steel Heetor E Davis, Sao Paulo Bagota. submitted the following questions of interpretation to the European Court of Justice: I. Does Article 2 Directive require to be interpreted in a way that it opposes the consideration of sounds as trademarks?