Successful Appeal in Trademark Dispute

Our client, a company providing goods in the toy sector, filed an application for trademark registration under class 28 (toys) on March 21, 2013, which was granted on May 16, 2023. However, the Brazilian Trademark Office had initially denied their application, citing the prior registration of a similar trademark filed by another company on October 22, 2012, and granted on September 22, 2015.
The lawsuit argued that the previously registered term was generic and could not be exclusively appropriated. Evidence was presented of seven prior registrations composed of the same term within the same class (28). Nevertheless, the first stage Court ruled against our client, stating that: (i) there was significant graphic, phonetic, and conceptual similarity between the trademarks; (ii) the figurative elements were not sufficient to eliminate the likelihood of confusion; and (iii) the existence of other registrations containing the same term did not justify coexistence between the parties’ trademarks.
The firm then appealed to the Regional Federal Court, which overturned the initial decision. The appellate Court recognized that: (i) the trademarks are distinct from each other; (ii) there are four other registrations granted by the Brazilian Trademark Office containing the same term in class 28, demonstrating that the term is weak or diluted; and (iii) the Trademark Office did not provide reasonable justification for the initial refusal, especially considering it had previously granted similar registrations.
This victory highlights the protection on intellectual property rights and ensures fair and reasonable treatment before administrative and judicial authorities.