A recent trademark dispute involving the use of a common term in the female fashion market has led to conflicting court decisions within a short period.
Our client (the plaintiff) owns two trademark registrations in class 35 (filed on December 2, 2004, and granted on May 14, 2019) and class 25 (filed on January 10, 2007, and granted on September 10, 2019). Meanwhile, the defendant applied for registration of a Name & Design trademark in class 35 on September 15, 2023. This application was denied by the National Institute of Industrial Property (INPI) due to the plaintiff’s prior registrations, and the decision was upheld upon on appeal.
Following this, a lawsuit was filed in the defendant’s jurisdiction requesting preliminary relief to prevent the defendant from using the conflicting term. However, on November 23, 2023, the judge denied the request, stating that: (i) the term in question is commonly used and suggestive in the female fashion market; (ii) despite the plaintiff’s registration with the Brazilian Trademark Office, the exclusivity of the term should be assessed carefully; and (iii) the defendant’s use of the term as part of a Name & Design mark, along with other figurative elements, differentiates it sufficiently from target market’s view.
Disappointed with the decision, the plaintiff refiled the lawsuit in its own jurisdiction. On January 29, 2024, the new judge granted the preliminary relief, highlighting that: (i) an administrative process had already been ruled against the defendant by the Brazilian Trademark Office; (ii) unfair competition was evident and potentially harmful to the plaintiff; and (iii) the defendant was ordered to cease using the conflicting term and remove all references to it from online platforms within five days, under penalty of a daily fine of BRL 10,000.00.
This case illustrates how trademark disputes can result in drastically different outcomes depending on the Court’s interpretation of the facts and applicable legal standards. It also emphasizes the importance of strategic legal action to ensure the protection of intellectual property rights.
