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 highest Brazilian federal court for non-constitutional matters has decided that a patent will not be revoked if, after failing to pay the applicable annual fees, the patent owner resumes paying these fees in subsequent years.
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.
Under the Mexican Trademark Law there is no obligation to use a trademark until renewal time is reached in the 10th year as of the filing date of the registration to be renewed and when filing the application for renewal it is only necessary to declare under oath that the mark has been used during a term of the last three years.
This year 2011 the Patent’s System in Mexico has been mainly characterized by two major events: a) the designation of a new General Director of the "Instituto Mexicano de la Propiedad Industrial" (IMPI in Spanish); and, b) the entrance of the IMPI to the Patent Prosecution Highway Pilot Program (PPH).
On April 7th, 2011 several media released the news that Jorge Amigo, General Director of the Mexican Institute of Industrial Property (IMPI) was leaving his position.
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