State courts have no jurisdiction to order the defendant to refrain from using a trademark registered before the BPTO
The 6th Civil Chamber of the Rio Grande do Sul State Court held that a decision ordering the defendant to refrain from using a registered trademark necessarily depends on the previous cancellation of the corresponding trademark registration granted by the Brazilian Patent and Trademark Office (BPTO). Also, it emphasized that such judicial cancellation of a trademark registration would be in the jurisdiction of a Federal Court, and not State Courts1.
The lawsuit was based on the alleged infringement of the mark “Gang” due to the use of the mark “Gangster” by the defendant, in addition to a claim of unfair competition.
In response, the defendant submitted evidence of the registration of its trademark “Gangster” granted by the BPTO, which would prevent a State Court from ordering the defendant to refrain from using this trademark.
The 6th Civil Chamber of the Rio Grande do Sul State Court agreed with the defendant’s arguments and dismissed the lawsuit.
1 Lawsuit No. 101/1.11.0000117-0
More information available in Portuguese at: https://www.conjur.com.br/2020-ago-21/justica-federal-determina-abstencao-uso-marca