The Superior Court of Justice ruled that the owner of a trade name has broader protection than the owner of a trademark and can oppose a trademark application even if the goods are not directly competing. Specifically, the court found that Maeda S/A Agroindustrial's long-established trade name of "Agropem" allowed it to block Vírbac do Brasil Indústria e Comércio's application for the similar trademark "Agropen", even though the goods were not identical, because trade name protection extends across different product classes. The decision was based on provisions in the Paris Convention providing that registered trademarks are not required for trade name protection across member states.

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Intelleetual Property • Brazil
Trade Names Give More Proteetion than Trademarks
Contríbuted by Moreira Lima, Royster & Ohno Advogados with Steel Hector & Davis LLP
November 12 2001
The Superíor Court of Justíce has ruled that the owner of a trade name has legal grounds to oppose
a trademark application even if the trademark does not compete dírectly wíth the trade name. The
court ruled that trade name protectíon ís broader than trademark protectíon, which may not extend
to goods ín dífferent classes.
A trade name is a name under which a company conducts its business. It can also serve as a
trademark if it meets the necessary requírements (ie, íf the corporation makes use of the trade
name in the course of busíness). A trade name has exclusive trademark rights only if it is used as a
trademark.
In the case at hand, Maeda S/A Agroindustrial was established in 1976 as Agropem Agro Pecuária
Maeda and applíed for regístratíon of the trademark 'Maeda Agropem' ín the same year. Twenty
years later Vírbac do Brasíl Indústría e Comércío applied for registratíon of the trademark 'Agropen'.
The lower court granted Maeda's exclusivíty ríghi. The Court of Justíce reversed the decísion, ruling
that a trademark must be consídered to be well-known in order for ít to enjoy protectíon throughout
dífferent market sectors. Maeda appealed agaínst the decísion, c1aiming a Iíkelihood of confusion
due to the assocíation and the simílaríty of the target markets.
The appellate court granted Medea the exclusive ríght to the trademark 'Agropem' and ruled that
Vírbac's trademark applicatíon be cancelled. The decision is based on Sectíon 8 of the Paris
Convention, accordíng to which trade names need not be registered ín order to be protected
throughout ali member states. The fact that Maeda had changed its trade name díd not weaken its
ríghts.
For further information on this topic p/ease contact Erica Aoki at Moreira Lima, Royster & Ohno
Advogados with Stee/ Hector & Davis LLP by te/ephone (+55 11 2832077) or by fax (+55 11 283
2078) or by email (eaoki@steelhector.com).
The materíals contained on this websíte are for general informatíon purposes only and are subject
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