BACKGROUND AND OUTLINE OF THE CASE

“WAELZHOLZ BRASMETAL LAMINAÇÃO LTDA” is a subsidiary of the German firm CD Wälzholz GmbH & Co. KG., an international manufacturer of cold-rolled and heat-treated steel strips and profiles.

The mentioned Brazilian subsidiary has been operating in South America since 1973. In São Paulo, approximately 350 employees produce cold-rolled steel strip in non-tempered variations, continuously annealed and surface coated. In South America, the BAUKUS brand has always represented a high-quality steel saw band and belongs to the Waelzholz Brasmetal product portfolio. The subsidiary manufactures more than 100,000 tons of material per year, which is mainly delivered to the local market, but also to other regions or countries of Latin America.

Mr. AJL is the owner of the trademark “BAUKUS” registered under No. 383771 to protect exclusively rolled steel in international class 6, applied on May 22, 2012 and granted on July 27, 2013 by the National Directorate of Intellectual Property of Paraguay.

On May 22, 2019, a Nullity Action before a Civil Court was submitted against BAUKUS mark, Reg. N° 383771 based on the articles of the Paraguayan Trademark Law No. 1294/98, Articles 2 (g and i), 18, 54 and 55, and stating that Mr. AJL applied in bad faith for an identical trademark to the one previously registered by WAELZHOLZ BRASMETAL’s, which was well known worldwide and locally, considering that at the time of applying (Mr. ARNILDO JACO) for its trademark, WAELZHOLZ’s trademark was already positioned in the market, therefore, its attempt to confuse the consumer public and take advantage of the notoriety of the trademark BAUKUS was unquestionable.

GROUNDS OF WAELZHOLZ BRASMETAL

The grounds presented by WAELZHOLZ BRASMETAL to support the action were the following:

  • The brand BAUKUS is a registered trademark in its country of origin (Brazil) and other countries and is a notorious trademark in the field of steel saws.
  • Mr. AJL registered an identical trademark both in its word and figurative element so it is possible to confirm that he could not have been unaware of it at the time of applying for the registration and that the same novel label was a product of his imagination.
  • The defendant applied in the same class and specifically for steel sheets, an identical product and protected by WAELZHOLZ BRASMETAL’s trademark.
  • From an investigation carried out and presented as documentary evidence, it was demonstrated that the defendant recognized the trademark as being the exclusive distributor in Paraguay of products of the BAUKUS trademark of the FRANZOI GROUP, which is a licensed and exclusive company of Waelzholz Brasmetal for Latin American countries, among them, Paraguay.

TOTAL ACQUIESCENCE TO THE CLAIM

The defendant fully acquiesced to the claim recognizing the ownership of the trademark BAUKUS, word and mixed under the name of “WAELZHOLZ BRASMETAL LAMINAÇÃO LTDA.”

CONCLUSIONS

When “WAELZHOLZ BRASMETAL LAMINAÇÃO LTDA.” attempted to expand the protection of the trademark BAUKUS and register it in Paraguay it was prevented from doing so by the fact that the trademark was already registered under the name of a different owner.

In defense of their rights a civil action for invalidation of registration was filed against an identical trademark previously granted with the intention to take advantage of the notoriety and positioning of the trademark that was already on the market.

The case concluded favorably for the owner since this enabled the company to continue with the registration process in Paraguay in order to protect it.