Particularities could cancel trademark registration and benefit Facebook owner in Brazil

Particularities could cancel trademark registration and benefit Facebook's owner in Brazil.

Last weekend, the São Paulo court suspended the provisional decision that prohibited the company Meta (owner of Facebook, Instagram and WhatsApp) from using this name in Brazil because the big tech company, according to the decision, "could suffer damage that would be difficult to repair" if it were forced to change its name before the final resolution of the case.

And why the confusion? In Brazil, there is already a company with this name and it has no connection with Mark Zuckerberg's conglomerate.

The Brazilian company, founded in 1990, is a digital transformation consultancy and has had Meta as a registered trademark since 2008. Mark Zuckerberg's company only officially changed its name in 2021.

According to the (Brazilian) Meta, there are already 143 lawsuits in which the company is mistakenly listed as a defendant, because they should be aimed at the American company. In recent months, 49 hearings have been scheduled in cases related to Facebook, at which Meta was or will be present.

"It's curious that the lawyers for the owner of Facebook claim in their appeal that, at the time the Facebook rebranding was implemented, there was no real dimension to how such a repositioning of the brand would take place, as well as the impacts that would be generated by such conduct, an argument repeated by the Court in the decision of the appeal, that is, apparently, the lack of due planning has become a legally valid argument," says Fernando Canutto, a specialist in corporate law and partner at Godke Advogados.

The expert also recalled that TIM went through a similar dispute. In this case, with TIM - Telecomunicações, Instalações e Montagens Ltda, a company from Goiás that had been using the brand for more than 10 years when the cell phone operator arrived in Brazil in 1999.

But the most famous recent case was the one involving Gradiente and Apple.

"The STF's decision was that Gradiente could use the trademark as it was written, 'G GRADIENTE IPHONE', but could not prevent Apple from using the expression 'IPHONE' separately. The case has not yet been closed at the STF, but it seems that the decisions should stand. However, we can't say that this will necessarily be the same path as the META trademark, because there are important differences between the cases," explains Luiz Fernando Plastino, an Intellectual Property specialist at Barcellos Tucunduva Advogados (BTLAW).

The expert points out that some particularities must be observed which could change the course of the dispute. "As a rule, a trademark registered for a longer period of time in Brazil will prevent the use and registration of a new similar trademark for similar products and services, regardless of other factors. However, there may be peculiarities in the case that would lead to another conclusion, such as restricting the scope of the registration, coexistence between the marks or even cancellation of the registration," says Plastino.

For Carla Gutilla, a lawyer at Ambiel Advogados who specializes in Intellectual Property, in some cases smaller companies can even benefit from the confusion of names. However, those affected also need to know how to use tools intelligently. "In the case in question, Meta (a digital consultancy) could benefit greatly from having the same name as big tech, since consumers might think that it is a company from the same group or that it has the Mark Zuckerberg 'seal'. But instead, the company has suffered negative consequences [complaints, lawsuits, etc]. From a practical point of view, and in view of the favorable ruling, I believe that the best way for a consulting company to stop being confused with big tech would be to make its brand as original as possible, as well as promoting marketing actions that reinforce that it has nothing to do with Mark Zuckerberg's Meta," he says.

*CarlaGuttilla - Lawyer at Ambiel Advogados, specializing in Intellectual Property. She has a postgraduate degree in Corporate Law from FGV and a law degree from the Pontifical Catholic University of São Paulo (PUC-SP).

*FernandoSzarnobay Canutto - Bachelor of Laws from Mackenzie Presbyterian University, post-graduate degree in Corporate Law from the Getúlio Vargas Foundation's São Paulo Law School (FGV), post-graduate degree in Corporate Restructuring Operations Law from CEU Law School, LL.M. in Corporate Law from INSPER - RJ. Introduction to Corporate Law and Corporate Restructuring courses at Vanderbilt University (TN - USA). Lawyer at Godke Advogados (Curitiba branch).

*LuizFernando Plastino - Lawyer specializing in Intellectual Property at Barcellos Tucunduva Advogados (BTLAW). PhD in Civil Law from USP - University of São Paulo. Master in Civil Law from USP - University of São Paulo. Postgraduate in IT Law from ESA-OAB/SP - Escola Superior de Advocacia da Ordem dos Advogados do Brasil, São Paulo Section. Bachelor of Laws from USP - University of São Paulo. Member of the Intellectual Property Dispute Resolution Center.