Lawsuit discussing conflict with an already registered trademark. Our firm took over an application for a trademark application at the BPTO for the client’s trademark in class 28. The BPTO rejected the application arguing there was a conflict with an already registered trademark in the same class 28. The opinion of the firm previously handling the case was not satisfactory for the client, who reached out asking for a second opinion.
Innovative strategy: Our team prepared a different strategy and recommended filing a lawsuit challenging the BPTO to review its administrative decision. Our litigation strategy was innovative because it is common practice in Brazil to include the owner of the trademark cited as an obstacle as a co-defendant with the BPTO in the court proceedings. However, because the owner of the cited obstacle had not actively opposed the client’s application (i.e., the BPTO rejected the client’s mark “ex-officio”), we advised our client to innovate and file the litigation only against the BPTO. The District Judge expressly confirmed the lack of a need to serve the owner of the cited obstacle with process to participate in the proceedings, based on the principle of court efficiency and a more “economic proceeding”. If the owner wished to participate in the proceedings they would need to manifest that intention by their own volition.
Latest development: With the cancellation action filed at court only against the BPTO, the federal attorney representing the Office discussed the case with the reporting examiner and decided to review the prior point of view. In other words, the BPTO agreed with our claims and acknowledged our client’s right to obtain a registration for the trademark in class 28. Subsequently, we requested an immediate ruling on the case, which was accepted by the Judge, who issued a decision in favor of our client. The case was closed on October 2021 and the court ordered the BPTO to publish that the client’s registration had been granted.
The significance, impact and/or outcome. We developed an innovative litigation strategy, which accelerated the proceedings and obtained a favorable decision for the client in almost record time and with reduced costs. The trademark represents one of our client’s best-selling products worldwide and in Brazil, where it is also subject to massive amounts of counterfeiting. Therefore, this registration was crucial for the client’s overall enforcement strategy.