February 1, 2019
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BRAZIL: Higher Court Cancels Trademark Registration Based on Registrant’s Bad Faith
In a decision published on November 13, 2018, lawsuit No. 0060900-52.2015.4.02.5101, the Federal Higher Court of Rio de Janeiro recognized the bad faith of By Cats Artigos Promocionais Ltda. (By Cats) in registering the mark PIQUADRO. The court unanimously ruled to maintain the registrations of Piquadro S.p.A. for PIQUADRO (stylized) in force and to cancel By Cats’ registration for PIQUADRO, as well as its domain, piquadro.com.br, and to prevent this company from using the mark in any way.
In 2009, By Cats, a Brazilian company, filed an application for the mark PIQUADRO in Class 25, which matured into registration in 2014. In 2010, Piquadro, an Italian company, applied for the mark PIQUADRO (stylized) in Classes 9, 14, and 18; these applications were granted on February 5, 2013.
By Cats filed a lawsuit against Piquadro in 2015, and, based on its earlier registration in Brazil, it obtained a preliminary injunction order determining the suspension of the effects of Piquadro’s registrations. Piquadro filed a counterclaim asking for the cancellation of By Cats’ registration. The lower court decided that By Cats had prior rights over the expression PIQUADRO due to its earlier registration in Brazil; therefore, By Cats’ registration was maintained in force, while Piquadro’s registrations were canceled.
Piquadro filed an appeal against the lower court’s decision. The reporting judge found that the lower court had not examined Piquadro’s main argument, which was By Cats’ bad faith in registering the mark PIQUADRO in Brazil. The higher court understood that By Cats was aware of Piquadro’s mark PIQUADRO when it applied for it in Brazil and took the following facts into consideration to decide that By Cats applied for the mark in bad faith: (a) Piquadro proved that its mark was known internationally in the apparel and accessories market; (b) By Cats had also filed applications for marks identical to third parties’ marks in the clothing market; (c) By Cats’ shareholder was also shareholder of a textile company in Spain, which was located near stores that sold PIQUADRO products; and (d) By Cats’ address was a residence and not a commercial address, which demonstrated that the company did not manufacture goods identified by the mark PIQUADRO.
Based on By Cats’ bad faith, the higher court maintained Piquadro’s registrations in force and canceled By Cats’ trademark registration and domain name.
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