The 3rd. Chamber of the Brazilian High Court of Justice, in Brasilia, rendered on April 07, 1998 a landmark unanimous decision where it was discussed whether a trademark registration wrongly issued by the Brazilian Trademark Office for a name considered to be generic should be enforced by the Courts. Such decision concluded that a trademark registration cannot be used to protect a generic name and, therefore, third parties using the same name may not be enjoined by the registration owner.

In Brazil, the Trademark Office makes a thorough examination of the registration requirements for each application. Not only there is a possibility of presentation of oppositions by third parties, but also applications may be refused ex-officio, either on grounds of genericness, or because anticipations were found during the examination. As a result of such complex administrative proceedings, it was long disputed whether in case of a registration wrongly issued for a generic name, the defendant could solely rely in a defense of voidness of the registration before the infringement court (which typically is a State Court), or he should also initiate its own law-suit, before a Federal Court, in order to annul the registration and, thus, be cleared from the consequences of the infringement.

Brazilian industrial property law already expressly admitted a statutory defense of voidness of the registration, but only in criminal cases. However, civil law-suits are much more common, specially because of the owner's interest in trying to collect damages from the infringer.

Now, for the first time, the High Court of Justice has decided that a defense of voidness of a registration can also be presented in a civil law-suit. Such decision was rendered in connection with a registration for the wordmark "DELICATESSEN", issued in 1983 for "food services", whilst the defendant ran a restaurant under the mark "PERALTA DELICATESSEN". The Court found that "being so generic, common and vulgar, there can be no talk about exclusive use of the expression delicatessen".

In Brazil there is no stare decisis and, thus, such decision is technically not binding upon the lower courts. Nevertheless, decisions of the High Court of Justice are usually followed by the State and Federal lower Courts, and several State Courts in the last few years have also rendered decisions along these same lines, so it can be now expected that such understanding will become widespread in Brazil. If any other Chamber of the High Court of Justice renders a contradictory decision in the future, then the final word will be given by an enlarged bench of such Court.

HARSHER PENALTIES FOR FALSIFICATION OF MEDICINES IN BRAZIL

Following popular outcry after a number of much-publicized cases of falsification of medicines, which resulted in deaths, unwanted pregnancies, and many medical complications, the Brazilian Congress has stiffened the penalties for the falsification of medicines. In accordance with recent Laws 9,677, of July 2, 1998, and 9,695, of August 20, 1998, falsification of medicines is now characterized as a "heinous" crime. As such, anyone found guilty of such crime cannot receive the benefits of amnesty, posting bail or being released on parole. The sentences to be imposed on those found guilty may range between 10 (ten) to 15 (fifteen) years and they can be cumulated with fines of up to US$ 180,000.00 and with the closing of the establishment.

2000 © Momsen, Leonardos & Cia.