STJ ruled that the Brazilian PTO may proceed with lawsuit, even if the parties have signed a judicial agreement

Posted on: 23/4/2021

trademark registration

The 4th Panel of the Superior Court of Justice - STJ unanimously decided, in a judgment published on March 25, 2021, that the Brazilian PTO may proceed with a lawsuit aiming the nullity of a trademark registration, even after the competitors have settled the case by an agreement. The main controversy in the case was to define whether it is possible to finish a lawsuit based on a transaction that did not have the participation or acceptance of the BPTO, which was also part of the demand. For the Ministers, “the procedural role of the BPTO, in the lawsuit for nullity of a trademark registration, when it does not appear as a plaintiff or defendant, will have the nature of sui generis (or atypical) intervention, since it is mandatory, in view the overriding public interest in defending free enterprise, free competition and the consumer”. With the decision, the case goes on to judge the merits in the Lower Court with the participation of BPTO in the lawsuit.

REsp nº 1817109 / RJ (2015/0268235-9)

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