Os diferentes direitos decorrentes do uso, notoriedade, depósito e registro da marca no Brasil

Abstract

Trademarks are essential to distinguish products. The ways to acquire trademark rights are an important subject of study. The analysis is commonly focused on the rights derived from use or registration, which may vary according to the system chosen. However, a deeper analysis shows the existence of other sources of trademark rights. The protection awarded to well-known trademarks does not require local use nor registration. Notoriety is an independent source of rights. Brazilian law also recognizes rights based on the mere filing of a trademark application, which are not foreseen in other countries. Despite the relevance of the issue, the state of art is deprived from specialized studies regarding the different rights that may come from the trademark use, notoriety, application or registration. The purpose of this study is the analysis of such 4 (four) sources of trademark rights (use, notoriety, application and registration), as well as the conflicts among them. We will define their legal nature, effects, extension and requirements. We will investigate if the use assures a simple priority to register the trademark or if it grants any other rights, which invalidate the registration granted to other person or allow the user to keep exploring the trademark, even in cases when such invalidation is no longer available. In the field of notoriety, we will analyze the protection against dilution, foreseen by the TRIPs treaty, but not yet implemented in Brazilian Industrial Property Law nr. 9,279 of 1996. We will examine whether it is possible to give direct effects to TRIPs, in order to invoke its rules to fill in the gaps in national law. We will also comment the paradox between section 6 bis of the Paris Convention for the Protection of Industrial Property and section 16.3 of TRIPs, to conclude if the registration is needed or not for the extended protection granted to well-known trademarks. We will also investigate the nature and extension of the protection awarded to trademark application. Finally, we will analyze the issues related to trademark registration