On October 17, 2012, Division 2 of the Federal Court of Appeals on Civil and Commercial Matters confirmed the injunction issued in re K against the misuse of the trademark "CASTEX PROPIEDADES" (and device) arguing that (i) a trademark, the validity of which has not been questioned, fulfills the requirement of likelihood of sufficient legal basis (fumus bonis iuris), and (ii) the use of a third party’s trademark gives rise to a presumption of damage in favor of its owner.
Regarding likelihood of sufficient legal basis, the Federal Court of Appeals held that:
“... The trademark enforced by the plaintiff is a trademark validly registered in accordance with the provisions of the Trademark Law, the validity of which is not questioned (...). Under these circumstances, the owner is entitled to have his trademark protected (...) and to prevent its use by third parties. Thus, the petitioner’s right to the preliminary injunction is sufficiently proved, as the likelihood of legal right appears to be sufficiently persuasive.”
When analyzing the requirement of imminent danger the Federal Court of Appeals invoked applicable case-law according to which:
“... the use of a third party’s trademark gives rise to a presumption of harm, whether by decreasing profits, affecting prestige or dilution of the trademark (...) which can even lead to uncertainty in consumers as to the origin of the service; which is enough to conclude that the requirement of imminent danger has been met.”
This decision has therefore extended to preliminary injunctions the presumption that the infringement of IP rights is damaging per se, and held that the requirements to grant the injunction had been met.
