The Supreme Federal Court referred a dispute over a trademark between a restaurant and a company to the Court of Appeal for further consideration, after it had overturned a ruling that rejected the restaurant owner’s claim, stressing the importance of ascertaining the international reputation of the company’s brand before preventing its registration of the plaintiff who took precedence in requesting its registration within the state.
In the details, a restaurant owner filed a lawsuit in which the authority concerned with registering trademarks specialized in, requesting the ruling to cancel the trademark committee’s decision to accept the trademark registration of the defendant company and refuse to register the trademark for it.
The plaintiff said that he «submitted to the Ministry of Economy, an application to register his trademark, and the defendant company objected, and then the Trademark Department decided to register the disputed trademark in the name of the plaintiff, so the company complained about the decision to the Trademark Commission that issued the contested decision to accept the registration of the trademark in the name of the company ».
The court of first instance ruled that the case was rejected, and the appeals court supported it, and the plaintiff was not satisfied with this ruling, and he appealed against it, explaining that “the ruling violated the law and fixed the papers, as he supported the ruling of the judge to reject the lawsuit, and among the things that is based on that is the trademark of the defendant company , Has acquired a global reputation that prevents it from being registered in its name, while the trademark fame has not gone beyond the borders of the country of origin which is the Philippines ».
The Federal Supreme Court upheld the appeal, stating that “trademarks of international fame that exceed the borders of the country of origin to other countries may not be registered, except at the request of their owner and in determining the fame of the mark, the extent of its knowledge with the public as a result of its promotion, and with the effect that it is for the mark to be famous It must first of all become global, that is, it has become widely known in many countries of the world ».
The court indicated that "the ruling was based on his judgment that the trademark of the defendant company is of international fame without clarifying how the trademark fame was exceeded from the country of origin to the scope of universality, and without clarifying the source from which his judiciary was drawn is in violation of the law."
The court also upheld the plaintiff's appeal against the ruling, which was based on his judgment that the defendant company is the first to use the disputed mark without proof of this with any document proving that the mark was previously used by the defendant.
A first instance court ruled that the restaurant’s claim was rejected and upheld by the “appeal”.