In a suit to dismiss a notice of opposition, the plaintiffs
learned the hard way the need for consistency, when the court
rejected their claim because it contradicted their own stance in
the inverse situation.
On November 10, 2011, in the case "Anton, Rodolfo
José et al v. Bodega Norton S.A.", Division 1 of
the National Court of Appeals on Federal Civil and Commercial
Matters reversed the district court's verdict and rejected
the lawsuit where plaintiff sought to dismiss the
defendant's opposition against trademark application
"D'ANTON" in Class 35. The basis for the
opposition had been defendant's trademark
"DALTON" registered in the same class.
To so decide the Court of Appeals took into account three facts:
all marks involved belonged to the same class; the marks
("D'ANTON" and "DALTON") were very
similar; and the plaintiff's prior acts were inconsistent
with its current stance.
Regarding this last issue, the Court especially pointed out that
shortly before applying for the registration of trademark
"D'ANTON" one of the joint plaintiffs, Ms.
Cecilia Rodríguez, had opposed an application for trademark
"DALTON" by Bodega Norton in Class 43 arguing likelihood
of confusion with trademarks "R.J. ANTON",
"D'ANTON COIFFEUR" y "D'AMTOM"
in Class 42. The Court therefore held that the plaintiff was now
barred by estoppel as it had argued before that the marks
were confusingly similar. Consequently, on the grounds of good
faith and the necessary consistence of social conduct in civil and
commercial activities, it concluded that the plaintiff had to bear
in full the consequence of its own conduct and rejected the suit to
have the opposition declared groundless.
This decision highlights the need to examine the
opposer's prior acts before filing a notice of
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The last March 19, 2010 came into force the AGREEMENT by means of which the preceding agreement that establishes the guidelines for filing applications before the Mexican Institute of Industrial Property (MIIP), issued by the General Director of the MIIP and published in the Official Journal of the Federation on March 18, 2010, was modified.
On December 13, 2011, in the case "Aventis Pharma S.A. v. Sandoz S.A. et al on patent infringement. Damages", Division 1 of the National Court of Appeals on Federal Civil and Commercial Matters examined the requirement of appraising the amount claimed when filing a complaint for patent infringement.
On November 10, 2011 Division 1 of the National Court of Appeals on Federal Civil and Commercial Matters confirmed the decision of the lower court in the case "Ediciones Proa y Alífaro, Roberto Francisco v. Fundación International Jorge Luis Borges y Kodama, María".
Advocacia Pietro Ariboni Ariboni, Fabbri, Schmidt & Advogados Associados
The current Industrial Property Law, No. 9279/96, has been in
force in Brazil for over a decade. Generally speaking, the Law is
modern and in line with the principles of international treaties
such as TRIPS and the Paris Convention.
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