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>[01.Set.11] Trademarks – Forfeiture to produce effects only in the future
Source: STJ [Adapted]

The forfeiture of a trademark registration, based on failure to use by the owner, shall have legal effects after its declaration is recorded (ex nunc), instead of retroactive effects (ex tunc). The decision, by majority of vote, was held by the Second Panel of the Superior Court of Justice (STJ) and reverted the previous decision in favor of the appeal of the company Lautrec Publicidade S/A and others, of São Paulo. When analyzing the issue, the Panel found that settling forfeiture’s effects for the future is most suitable as regards trademark registrations, since it provides greater legal certainty for economic agents and discourages counterfeiting.

The justice who delivered the opinion initially pointed out that, unlike nullity, in forfeiture, the condition for maintaining the registration ceases to exist, therefore, the legal effects shall be produced from this moment. The purpose of a registration is to make it known to third parties, reason why its cancellation is only effective from its declaration. The justice also noted that forfeiture is not automatic and may be repelled when the owner resumes the use of the trademark even after the end of the registration term. “The absence of use of the trademark may not legitimize counterfeiting, committed during the registration term”, explained the Justice.

According to her, the ex nunc effects of forfeiture assure the safety of trade agents, who are responsible for the development of the country, because, in the contrary, in case an interested third party confiscates the trademark, he shall be legitimate to seek compensation for future earnings from all previous owners.

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