Trademark Episodes: “The secret is the soul of the business”Written by José Varanda
Sara had a handmade products business and, together with a few other partners, decided to create an annual event to promote their products. A small party with local music and culture.
They called the event “Party Z” and tried to get a logo, order and print various promotional material and publicized the event well in advance with the local newspapers and radios, as well as on the internet and on the Facebook page they had created on purpose to promote the party.
Everyone in the region was aware of the great “Party Z” organized by a group of local producers.
About a few weeks before the event took place, Sara submitted the application for registration of a National Trademark, with the National Institute of Industrial Property (INPI), something she was already used to doing to register the brands of the products she sells.
She was surprised when she received a letter from the INPI with a Provisional Refusal of her trademark registration application, based on the existence of a previously registered trademark with precisely the same name – “Party Z” – and to indicate the services and products to which Sara intended to associate her mark. This happened despite the brands not being identical.
Strangely, Sara knew the owner of the previously registered trademark very well, Carla, who was a client of hers. Sara had talked about the event she was preparing months before, but she never imagined that someone would do such a thing – register the name of her Project as a Brand – especially being a client of hers.
Sara was convinced that it was all a huge misunderstanding and called Carla asking her to authorize her to use the expression “Party Z”, but Carla not only did not allow it, but demanded monetary compensation to give up the use of the trademark, which was now hers.
Feeling cheated and harmed by Carla, Sara did not accept to pay any compensation and sought help from a Lawyer, who explained to her that, having not registered her trademark in advance, and consequently having let third parties take possession of her concept, she had lost the rights over it.
A legal action to cancel the trademark registration was still considered, but the costs involved and the delay, which a legal process always entails, meant that Sara and her partners had to cancel the event and had to rethink a whole new communication strategy.