February 9, 2022

Trademark Episodes: “Timing is Everything”

Areias Advogados has been providing legal support regarding industrial property to its clients (both companies and investors) in various contexts involving industrial property law and, in particular, with regard to trademarks.

With this text, we start a series of 5 articles entitled “Trademark Episodes” where real-life situations will be described, in an unpretentious way, and through practical language, reflecting the importance of these themes in the day-to-day of companies.

The texts contained in the series are inspired by real events, composing, nevertheless, a fictional work, adapted and adjusted for communication purposes. The names of the participants, the names of the brands, as well as all the surroundings, represent a work of fiction, although inspired by real events.

Episode 1: “Timing is everything”

Samuel had been thinking about opening his own business for a long time. With diligence and dedication, this entrepreneur had already developed a business plan, as well as the entire business structure. Samuel knew who his suppliers would be, how he would produce his products and, finally, how he would proceed with their distribution.

There were months of preparation and reflection as to how he would implement what he called “his life project”. Samuel knew there was a lot at stake. The budget was tight for the launch of his new activity. All costs had to be correctly forecast and accounted for.

The distribution channel for Samuel’s products involved opening a physical store and a website to the public, where he would try to promote his business on online channels.

From day one, Samuel had in mind a name for the project and knowing Maria – a friend from college, who was a designer – he didn’t hesitate to ask her for help in developing the figurative component of his future brand.

As the project grew, the enthusiasm also did, especially when Samuel got to know the final result of the brand created by Maria; the colors and shapes that were created signaled his product brand. 

In a final phase, Samuel commissioned the production of various printed materials, from business cards to promotional billboards for his store. Naturally, he created and developed his website, where his products and brand were highlighted.

It was in an informal conversation with Acácio, a longtime friend, that Samuel was first confronted with a question.

“Samuel, congratulations! Your website looks fantastic. Did you have difficulty registering your trademark?”.

“Trademark Registration? What do you mean?”. Samuel couldn’t stop thinking about this.

The entrepreneur was completely unaware that his trademark had to be registered with the National Institute of Industrial Property. Worse: Samuel did not know that his brand could not be the same, or even similar, to other brands that were previously registered to mark identical or similar products on the market to those he intended to produce and distribute; brands that already existed on the market and that he himself was unaware of.

After seeking legal advice, Samuel got some bad news. The name he had always thought of for his project was already registered. Something that prevented Samuel from being able to obtain the registration of that brand he wanted so much – and for which there was, by the way, an associated logo.

The entrepreneur needed to change the name of his business, change his website and print and order new promotional material for his store.

The damage amounted to a few hundred euros. More importantly, this could have been completely avoided.

This is a classic situation. And it happens more often than you might think. In these cases, the expression “Timing is everything” fits like a glove. Not only because Samuel started from the end (ordering the logo and printing material without having his trademark previously registered); and also because whoever arrives first at the registration is the first to obtain the respective right to the desired name, thus preventing third parties from obtaining and using that same name.