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19 April 2000
The court granted a preliminary injunction on behalf of Air New Zealand Ltd, thereby suspending the registration of the trademark AIR NEW ZEALAND which the Brazilian Patent and Trademark Office had granted to the Brazilian firm GSA Ltd. In accordance with Brazilian procedural law, the plaintiff, Air New Zealand, has been given 30 days to file an action against GSA to prohibit GSA from registering the mark.
More recently, the Superior Court of the State of Paraná upheld the decision of the Civil Court (16th Section) prohibiting the defendant, Laboratorio de Aprendizagem Meu Cantinho, from using the domain name 'Ayrtonsenna.com.br'. The Civil Court had determined that the domain name belongs to the plaintiff, Ayrton Senna Promoções Ltd.
The Superior Court confirmed that the domain name does not have to be registered in order to be protected. Therefore, only the owner of the trademark may exploit the similar domain name, and no other party may attempt to register the domain name.
This case is significant because Brazil has adopted the 'first to file system' for protecting trademarks. The 'first to file system' applies to the registration of domain names as well, with a few exceptions. A few well-known or notorious marks that have been registered as trademarks may also be protected as domain names even though they have not been registered as domain names by the trademark holder.
Consequently, there are a number of actions pending in the courts concerning the registration of a domain name by someone other than the trademark holder of that name. So far, all decision have been rendered in favour of the title holder, that is, confirming the existence of a relation between a domain name and a trademark.
For further information on this topic please contact Eduardo Magalhães Machado at Montaury Pimenta, Machado Lioce by telephone (+55 21 240 1396) or by fax (+55 21 240 1524) or by e-mail (email@example.com).
The materials contained on this web site are for general information purposes only and are subject to the disclaimer.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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