Elisa Santucci, partner of the firm, actively participates in the “Enforcement Committee” of INTA, allocated at the “Courts and Tribunals” Subcommittee. The objective is to study judicial practices of several countries and improve them where possible. This subcommittee initiated the project “Survey Research”, with the initial proposal to assess frequency and effectiveness of public opinion polls in court cases involving trademarks.

For example, in a court case where plaintiff wishes the deconstitution of a trademark registration based on genericness, plaintiff must prove that the mark is already of common use (and/or generic) and that, therefore, the respective registraion must be canceled. An evidence that plaintiff could submit is a public opinion poll showing that a good part of the population has referred to such brand as generic, indicating that the brand lost its ability to distinguish products or at least identify their origin.

There are cases in which the polls show that there is confusion between consumers when faced with allegedly similar marks. The result of a survey such as this one could lead a court order for the cancellation of a registration that was originally granted based on the understanding that the marks were not sufficiently similar to cause confusion.

A study by the “Courts and Tribunals” Subcommittee should be published on the INTA’s website, and will give greater weight to public opinion polls in court proceedings.

Click here for more information on the INTA’s Enforcement Committee

Source: Bhering Advogados

 

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