Proofs of Use and Trademark Expiry: The Approach of the Brazilian Judiciary
The expiry of a registered trademark is a complex legal issue often addressed by the judiciary. Central to this issue is the proof of use, a fundamental criterion that can determine whether a trademark continues to enjoy legal protection or becomes public domain. Let's explore how the Brazilian judiciary is handling proofs of use concerning trademark expiry.
The Importance of Proof of Use
According to the Industrial Property Law (Law No. 9.279/96), a trademark must be used within five years from its registration or last use. Failure to demonstrate this use can lead to the expiry of the registration. However, the interpretation of what constitutes sufficient "use" can be widely debated, and this is where the judiciary plays a crucial role.
Judicial Treatment of Proofs of Use
Analysis of Proof of Use
The judiciary is tasked with evaluating whether the trademark has been used in a manner that maintains its distinctive function in the market. This includes the analysis of advertising materials, sales records, and even digital presence that demonstrate the continuity of the trademark's use in commerce. The proof does not necessarily need to indicate a high volume of sales or extensive marketing but must be sufficient to show that the trademark has not been abandoned.
Notable Cases
There are cases where the judiciary has been flexible, considering, for example, the use of the trademark in products or services even on a reduced scale, provided there is a genuine effort to keep the trademark in the market. Conversely, evidence that shows only sporadic or symbolic use has been deemed insufficient to avoid expiry.
Challenges and Considerations
One of the main challenges faced by the courts is determining the threshold between nominal and substantial use. Additionally, the economic context and the particular circumstances of each case can influence the decision, with judges needing to balance the interests of trademark owners with those of the public and potential competitors.
Proof of use is a crucial legal tool in determining the expiry of a registered trademark. How the judiciary handles these proofs is of vital importance as it sets the standard for trademark protection in Brazil. Trademark owners must be aware that maintaining detailed records and consistent evidence of their trademarks' use is essential to ensure the continuity of legal protection. Therefore, the legal battle over expiry and proofs of use is not only about the law but also about the strategic practice of brand management.
