Brazilian Domain names and Trademarks Registered by Different Owners: Which One Should Prevail?
Registering a domain name that matches with the trademark is an established course of action for the protection of a company’s IP assets.
In fact, a domain name has the same function as a trademark in the online world: the domain becomes the virtual image of the business.
Sometimes, however, the same domain name and trademark may have been registered by two different owners. The issue is particularly relevant in Brazil, where cybersquatting has been on the rise for several years. But it can also happen that a company registers a domain name identical to a previously registered mark in good faith. As the Brazilian IP law does not regulate domain names, the issue has been tackled by Brazilian Civil Courts, which are still making clarity in a particularly entangled area.
The Legal Panorama: Domain Names in Brazil
Art. 5 of the Brazilian Constitution grants protection to industrial inventions, trademarks and business names but also to other distinctive signs – a category which is likely to include domain names.
Brazil, like many countries, has a “first-to-file” domain name registration policy. FAPESP, the São Paulo Research Foundation, is the organization responsible for registering domain names in Brazil. FAPESP enacted guidelines that …
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Opposing a Trademark Registration in Argentina
According to data from the Argentine Patent Office (INPI) in 2016, there were 71.020 trademark applications and 14.211 trademark oppositions, around 20% of all applications. What’s the procedure for opposing a trademark registration in Argentina?
The Argentine Trademark Law 22362 establishes that every trademark application is followed by a formal examination carried out by the INPI. After the examination, the application is published in the Trademark Bulletin (Boletín de la Dirección Nacional de Marcas). After the publication, third parties have 30 days to oppose the trademark application if they think there may be a potential infringement of their intellectual property rights.
The Opposition Proceedings
Once an opposition is filed against a trademark application, the applicant is given a one-year term from the date he is officially notified of the opposition: within this term, the applicant has to obtain the withdrawal of the opposition through direct negotiations with the opponent, or file proceedings to the Argentine Federal Courts.
The difference with other legal systems is apparent: the INPI is neither allowed to decide on the merit of the opposition, nor can it provide advice to the parties. The opposition procedure takes place between the parties or can ultimately be referred to …
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