STJ denies Goodyear’s request to keep “highly renowned” (famous) trademark status for indefinite time
November 10, 2017

The Third Panel of the Brazilian Superior Court of Justice (STJ) denied the request of The Goodyear Tire & Rubber Company to stop the BRPTO from applying the limited 5-year term of protection to the company’s famous trademark. Article 125 of Law 9.279/96 (Industrial Property Law – LPI) provides protection in all fields of activity to trademarks that are formally recognized as famous. The BRPTO currently grants such protection for a 5-year term, based on Resolution 121/2005. In 2002, the company filed a lawsuit seeking the declaration of the highly renowned status for its trademark “Goodyear”. In 2004, the former 39th Federal Court of Rio de Janeiro granted the plaintiff’s request and compelled the BRPTO to declare the fame of such trademark. The BRPTO confirmed that it would comply with the court’s decision and then proceeded to act in accordance with Resolution 121/2005, which sets out that the relevant status is protection for five years. Goodyear did not agree with the limited protection period, stressing the final decision on the merits was rendered before the Resolution comes into force. The Federal Court ordered the BRPTO to exclude the 5-year limitation. However, the Federal Court of Appeals for the 2nd Circuit (TRF2) found that once the fame of a trademark is recognized, the BRPTO has exclusive authority to define the proceedings related to it. For this reason, the 5-year term provided by Resolution 121/2005 must be applied and this does not violate res judicata. The Superior Court agreed with the Federal Court of Appeals, ruling that there was no issue with the final decision on the merits. According to STJ, the enactment of Resolution 121/2005 did not change the content of the Federal Court’s decision. It determined the recognition of the Goodyear trademark as famous, which was achieved and did not change after Resolution 121. The above case is an important precedent since it defines the boundaries between the Judiciary and the BRPTO’s performances on the recognition of a highly renowned trademark. Another important aspect discussed in the case is the possibility of granting a perpetual intellectual property right, which would go against the very nature of such right. As the Superior Court stressed, recognizing the fame of a trademark without a validity term would be the same that granting a perpetual right and this is not possible under our legal system. If you have any questions or need additional information, please contact us at prevail@localhost/licks/site.

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