With the closure and restrictions imposed by the Covid-19 pandemic as well to the increasing use of smartphones and social media, or rather, e-commerce, has been growing more and more, giving a great visibility to already-known trademarks and introducing the public to little-known trademarks. In this digital scenario, important figures, trademark ambassadors have emerged as marketing experts, the so-called digital influencers who, the more engagement they conquer on social media, the more sought after they are by trademark owners who, assuredly, well advised, know the value of maintaining their trademarks in evidence.

Within the phenomenal growth of digital commerce, and the importance of trademarks in this escalation, one can highlight the boom in electronic sales of well-known trademarks and new ones just launched too.  They are advertised on TV shows offering QR code on the screen for an immediate access to their sales, with special emphasis on a famous reality show that has become a showcase for trademarks. In this digital world, trademarks open the doors of virtual stores, leading their customers to consume without leaving the comfort of their homes where they are provided with their purchases or have services rendered in a few hours or in a few days.

The Coronavirus pandemic, which is still ongoing, has brought countless challenges to all of us, in addition to having caused strong shocks in the world economy, especially in developing countries such as Brazil.

Many Brazilians found a business opportunity in the virtual world, putting their ideas and creativity into practice, and thus leveraging the e-commerce of products and services during this pandemic.

However, how can products and services be sold without a name or a trademark attached to them? Impossible, of course. After all, the trademark is the fundamental element that will distinguish what is intended to be sold among other similar or related products and services existing in its market segment. A trademark plays an important role in attracting the buyer to the business and creating a link, a loyalty of its audience to the products and/or services marketed through it, and this is the reason why a trademark, especially with the great visibility given by the digital world, cannot be banal, weak, or merely similar to existing ones.

As determined by the Industrial Property Law (LPI) No. 9,279/96 in its article 2, item III, it is through registration that a trademark acquires the necessary legal protection against third parties. The federal agency responsible for granting trademark registration in Brazil is the National Institute of Industrial Property (INPI). Once the trademark registration is granted, it will remain in force for ten years and may be renewed every ten years of validity. This trademark Office is also responsible for settling conflicts between parties whose trademarks are identical or similar within the same or similar marketing segments.

However, for the granting of trademark registration, the Trademark Office (INPI) follows the criteria established by article 124, and its items, of the referred Trademark Law (LPI), in which it is established that some signs cannot be registered as a trademark, such as the coat of arms, official, public, national, foreign or international weapons, medal, flag, emblem, badge and monument; letter, number and date, in isolation, unless they are composed in a sufficiently distinctive way; expression, figure, design, or any other sign contrary to morals and good customs or that offends the honor or image of people or violates freedom of conscience, belief, religious cult, idea or feelings worthy of respect and veneration; sign or expression used only as a means of advertising, and other prohibitions.

According to the Trademark Law (LPI), it is also prohibited to grant a trademark registration for a sign that reproduces or imitates, in whole or in part, even with an addition, another registered trademark, or aims to distinguish or to certify an identical or similar product or service, susceptible of causing confusion or association with a third party’s prior trademark.

In order to be registered as a trademark, the sign must be distinguishable from others in its field of products and/or services and may be composed of a single word or expressions and/or figures, either in black and white or in colors. The more the sign stands out from the existing ones, the greater it is its capacity of drawing the attention of consumers. On the other hand, a trademark cannot be registered when it consists only of words or expressions of common use, banal, vulgar, generic, or even descriptive, such as, for example, “ROASTED COFFEE” for coffee, “SHARP SCISSORS” for scissors or “STRONG WIND” for fans. Weak trademarks only gain strength and registration conditions if highlighting and distinctive word and/or figurative elements are added to them.

The Brazilian Trademark Office may ex-officio reject an application for registration if the intended trademark contains one of the prohibitions in article 124 of the Trademark Law (LPI), which stipulates conditions for a sign to be registered as a trademark. The Trademark Office can also be moved by a third party interested in the applied-for trademark or already owner of a prior application or registration for same who does not wish to allow coexistence of its trademark with the intended sign. For this purpose, the interested party must file an opposition petition and justify the reason why the attacked sign must not be registered. If the Brazilian Trademark Office understands that the trademark application should not be led into registration, the holder of the rejected application may appeal against the rejection decision or, in case of an opposition, the holder may file a reply with its arguments against it.

Therefore, it is extremely important to carry out a previous search on the Brazilian Trademark Office´s database to investigate the possible existence, within the Brazilian territory, of an equal or similar trademark with which it is intended to market the products and/or services of interest. If the search result is negative, that is if there are no previous trademarks conflicting with the one you want to register, the path will be, in principle, free to obtain protection through registration.

Thus, it is essential that companies, in addition to taking care of the marketing of their products and services, seek, whenever possible, information about trademarks that already exist in the market. This type of verification can avoid conflicts and unexpected expenses that result from the need to change the identity of a product or service.

However, it is very common, often due to total ignorance of the trademark legislation and the importance of registration, especially in the world of small businesses and start-ups, the entrepreneur ends up neglecting their trademarks, leaving it without legal protection and consequently exposed to the risk of having their signs used by third parties. This type of behavior is harmful to the bona fide merchant, as it tends to divert its clientele and confuse consumers, who are not always able to distinguish such similar or identical signs.

Therefore, it is always recommended to take the necessary measures to seek trademark protection, especially considering digital commerce growth. After all, a well-protected trademark becomes famous, acquires reputation, and represents an asset that can reach high values in the capital market.

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