Imagine that a company (let’s call it “Company B”) starts using a mark for its business. Later, she is surprised by a lawsuit filed by a competitor (“Company A”), which has a previous registration with the Brazilian PTO containing a similar term. Company A demands the immediate cessation of the use of the trademark and the payment of a heavy indemnity.
What many think: “If the competitor has the previous registration and the judge granted an injunction ordering them to stop using, the cause is already lost and we will have to pay the indemnity.”
In practice, it’s not quite like that.
The defense specialized in intellectual property allows not only to demonstrate the good faith of the company, but also to preserve the strategic value of the distinctive sign adopted and to avoid unfair convictions.
In certain cases, even after unfavorable initial decisions (such as an injunction), it is possible to reverse the scenario in the defense and in the final judgment, demonstrating, for example:
- That, the main term of the trademark is of common use, generic or designates geographical origin, having been granted by the Brazilian PTO without exclusivity;
- That minor changes in the trademark set or in the corporate name comply with court orders, without configuring non-compliance;
- The absence of adequate technical grounds or conceptual confusions on the part of the prosecution (such as confusing the legal concepts of trademark and patent);
- The legitimate coexistence of trademarks that share weak or evocative terms in the same market segment.
With proper technical rationale, the course of the process can be fully reviewed. As an example, there is a recent real case in which, after the specialized legal action of the CNV team, an action that began with a very serious injunction was totally reversed.