Trademark Episodes: “Products and Services”Written by José Varanda
Bernardo, founding partner and manager of the “Doces Lda.”, owned a chain of pastry shops in the main cities of the Country. With a proven track record in the market for several decades, the entrepreneur has built a profitable business that is well known to the public. Bernardo’s “XPTO” pastries were a reference of excellence, good taste and status in all the places where the brand was present.
Bernardo was looking to expand his business and started looking for investors for this purpose. It was with great pleasure that Bernardo received a proposal from a foreign company that intended to invest in “Doces Lda.”. For this purpose, a prior due diligence was initiated, in order to analyze all the legal documentation of that company and to verify the company’s compliance status and the protection of its assets.
As part of the due diligence that was carried out, the Lawyers representing the foreign investor verified that the National Brand “XPTO”, a prestigious brand with several decades in the market, was registered in the Country’s Institute of Industrial Property to indicate the “Coffee” product in Class no. 30 of the Nice Classification.
In fact, for some reason that Bernando was unaware of, several years ago the «XPTO» brand had been registered to mark “Coffee” on the market as a product and not for Pastry Products, which were, in fact, the products that consumers most associated with the brand “XPTO”. Also, the services of “Pastry” or “Coffee Shop Services” were not covered by the trademark registration that was in force.
For several years, Bernardo was convinced that he had correctly registered his trademark for the activity he was carrying out, without knowing that his trademark registration was, in fact, poorly registered.
The famous confectionery chain “XPTO” was registered with the INPI only for coffee and not for all the services provided by the brand and recognized by consumers as such.
This fact did not compromise the entry of the investor, who maintained interest, but significantly reduced the commercial value of “Doces Lda.”, with the investment round being carried out at lower values than those initially negotiated.