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By Ed Taylor
Oct. 22 — A Brazilian federal court judge ruled on Oct. 15 that Brazil's largest credit and debit card operator must change its name because it is the same as the last name of a famous Brazilian Olympic swimmer.
The company, called Cielo, was given 180 days to stop using that name and eliminate the mark. Cielo was created in 1995 as a joint venture between Visa International and six Brazilian banks. It was originally called VisaNet but in July 2010 its name was changed to Cielo.
This occurred nine months after the then VisaNet signed a contract with swimmer Cesar Cielo giving the company the right to use Cielo's image in its advertising. At the time Cielo was a national hero, having become the first Brazilian swimmer to win an Olympic gold medal while competing in the 2008 Beijing Olympics.
Two months before signing the contract with Cielo, VisaNet had deposited requests with Brazil's National Institute of Industrial Property (the Instituto Nacional da Propriedade Industrial, or “INPI”) to register two names, “Identa” and “Cielo.” According to court documents filed by Cielo's attorneys, the day after the contract was signed, VisaNet chose “Cielo” as its new name.
In 2012, Cielo and the company that represents him, Cielo Sporting Goods, filed a claim requesting the nullification of the Cielo registration and the prohibition of its use by the credit card company. They claimed that the INPI had erred in approving the registration of the mark Cielo.
Federal Judge Marcia Maria Nunes de Barros of the 13th Federal Court in Rio de Janeiro ruled in favor of the plaintiffs, accepting their basic argument that the contract signed by Cielo covered use of his image but not his name.
“Undoubtedly in choosing the new mark, the defendant had full knowledge of the fame of the plaintiff's name,” Barros said, adding that the contract did not give the company the right to use Cielo's name.
Barros charged that the company acted with “regrettable neglect” in not reaching an explicit agreement with Cielo for the use of his surname as the firm's new mark.
In its defense, the company claimed that it was referring to the word “cielo” which means sky in both Spanish and Italian. According to the company, it chose the name in order to launch an advertising campaign based on the idea that “the sky is the limit” for the company. The firm stated that it chose “Cielo” for the campaign because of the “coincidence” of his name and the word “cielo,” which is Spanish for “sky” or “heaven.”
This, however, was rejected by the judge who stated that by linking its new mark with the athlete, the company destroyed any defense “that it chose Cielo because of the word's meaning in Spanish and Italian. The company unmistakably created this [linkage] and must deal with the onus of its imprudent choice.”
The judge based her decision on Article 124 of Brazil's Industrial Property Law which states that it is not possible to register as a company's mark a name, signature or family name without the consent of the persons involved.
After the ruling, attorneys for both sides said they would appeal. The swimmer's attorney, Adauto Emerenciano of the firm Icamp Marks and Patents, objected to the 180-day time limit given the company to rid itself of the mark “Cielo” and said he would appeal to have it reduced.
“At this moment, there is abusive use by the company,” he stated.
The company called the decision the first in the case and stated that it would appeal. The Attorney General's Office represented the INPI in the case but afterwards declined to comment on the ruling.
To contact the reporter on this story: Ed Taylor in Rio de Janeiro at email@example.com
To contact the editor responsible for this story: Derek Tong at firstname.lastname@example.org
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