June 19, 2022

Trademark Episodes: Ownerships

António founded his company in 2016, a business of which he was the sole partner and manager. His business grew steadily for several years, having increased both its turnover and the number of employees.

In 2020, António met Bernardo, who was interested in investing in his company. After several talks and negotiations, Bernardo and António agreed that the best way to complete the deal would be for Bernardo to purchase the entire share capital of the company, leaving António to assume the shared management of the business and benefiting Bernardo from the in-depth knowledge that António had of the business.

The business relationship continued for several years until António decided to leave the company and resign from its management. It was only at that moment that Bernardo became aware that the Company’s Trademark was registered within the INPI in the name of António and not of the Company.

At the beginning of the company’s incorporation, António, as sole partner and manager, had requested the registration of the company’s trademark in his name, never having transferred the trademark to the legal sphere of the company, which, at that time, was exclusively his.

Bernardo, in turn, when acquiring the company, had never taken the precaution of verifying if the Company’s Brand, which even represented an important asset of the company, was registered in the Ownership of the Company, i.e. in the legal sphere of the company and not in the ownership of António (former founding partner).

António, when he left the company and thanks to the good relationship he always had with Bernardo, signed the brand transmission contract, correcting the situation and restoring the truth. In this situation everything was resolved without problems, but it would not be strange that in another situation António could demand some additional compensation for the transmission of the brand, thus increasing unnecessary costs for Bernardo.