French brand “chandon” cannot prevent the use of the name by a Brazilian nightclub 19 abr 2018

French brand “chandon” cannot prevent the use of the name by a Brazilian nightclub

In March, the Brazilian Superior Court of Justice (STJ) ruled that well-known marks are protected only regarding goods and services which are identical or similar to those offered by it. Therefore, the coexistence of identical trademarks would be authorized provided that the respective products or services belong to different fields of activities.

This matter is related to a claim filed by the French sparkling wines’ manufacturer, Champagne Moët & Chandon, against a brazilian nightclub named “Chandon”. The French brand required the change of the club’s name under the allegation that it was being used without its consent since the brand “Chandon” would have special protection for being a well-known mark.

In first instance, the trial court ruled against the plaintiff, arguing that the marks were not liable to create confusion due to the different activities that were carried out by the companies and the difference between the spelling and the logo of both trademarks. The French brand then filed an appeal and the state appellate court upheld the ruling, also stressing that the “Chandon” brand is not a “highly renowned” trademark, being therefore protected only in its field of activity.

The French brand then filed a special appeal to STJ, which maintained the decision of the lower courts, sustaining that the trademarks were not liable to create confusion among the consumers, especially because of the clear distinction between the activities that were carried out by them.

The reporting judge also reaffirmed STJ’s precedents on the ground that “highly renowned” trademarks, which are registered before the INPI as such, enjoy protection in all fields of activity, while well-known trademarks enjoy international protection regardless of being registered in Brazil, but only in its field of activity.

In case of any doubts about this subject, please do not hesitate to contact us.

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