The Supreme Federal Court referred a dispute between a restaurant and a company over a trademark to the Court of Appeal for further consideration, after it overturned a ruling that rejected the restaurant owner’s claim, stressing the importance of ascertaining the international fame of the defendant’s trademark before the registration of the plaintiff who took precedence in a request Registered within the state.
In the details, a restaurant owner filed a lawsuit in which the authority concerned with registering trademarks ruled, 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 after publishing the registration application, the defendant company objected, and then the Trademark Department decided to register the disputed trademark in the name of the plaintiff, so the defendant company complained of this decision to the Trademark Commission which issued The contested decision to accept the registration of the mark in the name of the defendant company, "adding that the decision violated the law because it is the first to use the mark as well as the request to register it."
The court of first instance ruled that the case was rejected, and the appeals court supported it, and the plaintiff did not accept this ruling, and he appealed against it, explaining that "the ruling violated the law and the documents are fixed, because it supported the ruling of the court to reject the case. It has acquired a global reputation that prevents it from being registered in its name, while the trademark fame has not exceeded the borders of the country of origin and it is the country of the Philippines and it has not gained any international fame which requires its veto.
The Supreme Federal Court upheld this appeal, explaining that "according to the provision of Article 4 of the Trademark Law, it is not permissible to register internationally renowned trademarks that exceed the borders of the country of origin to other countries except at the request of its owner and take into account the determination of the reputation of the mark to the extent of its knowledge with the public as a result Promoting it, and with the effect that in order for the mark to be famous, it must first acquire the international characteristic, that is, it has become widely known in many countries of the world and that its promotion is what has earned it knowledge among the consumer audience in these countries so that it becomes necessarily necessary for them to have it Its trademark has gained international fame, and it is not intended to be universal simply by using the mark as the country of origin to another country or a specific number of countries that contain a specific region, but the global meaning is intended to exceed the use of the mark by many countries so that it is known to the global consumer audience, and that its fame in this It is Mathabah that earned its owner what it takes to register it in his name.
The court indicated that "the judgment was based on his judgment that the trademark of the defendant company is of international fame without stating how the trademark of the country from the country of origin - the Philippines - is exceeded to the scope of the world and without indicating the source from which his judiciary was drawn from, which is against 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.