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
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
In accordance with the Mexican
Patent and Trademark Law in Mexico, in order to maintain patent,
industrial design, and utility model registrations in force through
their life terms, the payment of maintenance fees is necessary.
Current Intellectual Property Law No. 9,279 of May 14, 1996 and the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement allow for patenting of pharmaceuticals in Brazil. Notwithstanding, in 2001, the Brazilian IP Law was amended and the prosecution of pharmaceutical patent applications changed substantially.
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.
In the last months, Mexico seems to be reinventing itself and has been living several changes in its regulations and institutions.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”