By Marcos de Vasconcellos
The difference between a letter of the name of two companies in the same branch has not avoided the suspension of use of the mark until the court eventually decides. Combat and Kombat are machinery firms disputing the use of the nomenclature. A decision on an injunction banned the second company to use the mark until the a final decision of the lawsuit is available.
The dispute has actually begun because CTO do Brasil (which uses the fanciful name Combat Máquinas) sent a cease and desist letter to its competitor Kombat Soluções em Máquinas e Equipamentos demanding the change of its trade name. CTO alleged that the mark is registered and protected by the Brazilian law. In a reply, Kombat stated that: “neither trademark infringement nor unfair competition have been committed.”
After receiving the reply to the cease and desist letter, CTO filed a lawsuit. The plaintiff demanded the competitor to no longer use the name and mark Kombat, as well as to pay an indemnity to be fixed by the Court. The lawyer determined the anticipated judicial protection and that in if the Defendant does not comply with the order, all its materials, machinery or equipment bearing the name Kombat be seized.
The judge Luis Mauricio de Oliveira Sodré, of the São Paulo State Court Civil Court of São José dos Campos, prohibited the Defendant to use the mark Kombat until the merits of the court action are decided. According to him, “the allegations made in the initial motion are plausible, and damages could technically occur, if the injunction is not granted.”
In its filing motion, the Plaintiff stated that the application for the trademark “Combat Machine” was filed with the Brazilian Patent and Trademark Office (INPI) in April 2011. The Plaintiff also invokes the trademark protection, afforded by Article XXIX, item 5, of the Brazilian Constitution. This is because, so claims the lawyer, the CTO do Brasil has invested a lot in order to divulge the name, and it would be unfair to allow a competitor to use a similar name in the same branch of activities.
According to the Trade Register of the State of São Paulo (Jucesp), Kombat Soluções em Máquinas e Equipamentos, was established in March 2012 and has a capital R$ 10,000.00 (approx. US$ 5,000.00). In contrast, according to the same Register, CTO do Brasil, was incorporated on April 4, 2006, and has a capital of more than R$ 1 million (approx. US$ 500,000.00).
Marcos de Vasconcellos is a journalist reporter at the Magazine CONSULTOR JURÍDICO.
Source: http://www.conjur.com.br/2012-ago-18/justica-proibe-empresa-usar-nome-concorrente-trocando