by Caio Richa de Ribeiro e Yannick Frederic Schweizer
September 20, 2019
As widely known, cases of famous trademarks that earn nicknames are not rare, as consequence of a phenomenon instigated by the consumer public – although subsequently stimulated by the owner itself – indeed working as a real sign of penetration and social appeal.
Such nicknames, whether registered or not before the Brazilian Patent and Trademark Office (BPTO) [National Institute of Industrial Property (INPI)], gain distinctiveness over time, among targeted and general public alike, therefore adding enormous value to the trademark. As a consequence, while fostering popularity and acting as an useful marketing tool, they may also subject the mark to higher risks of market reproductions and counterfeits – let alone unscrupulous third parties who see a “once in a lifetime opportunity” of associating their business with that of the “nicknamed” trademark.
It is in this context that a recent decision rendered by the IP-Specialized Federal Court in Rio de Janeiro, involving imitation of the trademark “BMW”, commonly and affectionately abbreviated as “BM” both by consumers and dealers themselves, stands out. After the BPTO mistakenly granted a registration for the word and design mark “EuroBM” to identify vehicle assistance services – what was followed by fruitless attempts to resolve the issue amicably – the BMW Group had no option but to bring a lawsuit seeking not only the cancellation of the spurious registration, but also to definitively withdraw the infringing sign from the market.
One of the main claims showed that the infringed trademarks are popularly known, in Brazil, by the acronym “BM”, obviously in clear reference to “BMW”. The initial complaint gathered several exhibits in this sense, such as extracts from highly-accessed blogs, automotive discussion forums, Instagram posts, ecommerce platforms offers, among other evidences attesting to such status.
The case obviously contained other elements to demonstrate Defendant’s bad faith, as well as its desire to deliberately approximate to BMW: the use of “Euro” as a prefix, clearly aiming on honoring a purported European origin, not to mention the adoption of a figurative portion resembling the famous BMW circle.
In any way whatsoever, the Court ruling granted the initial claims as a whole, concluding that the mere evocation of sign “BM”, inside the market segment in reference, undoubtedly alluded to “BMW” trademark. It was even noted that “the Brazilian Association of BMW Dealers (“ABBM”), which brings together resellers of the Claimants’ trademark, does not contain the letter “W” at the end of its acronym”.
Given this scenario, the Judge found that the coexistence of signs “EuroBM” and “BMW” on the market was likely to lead to confusion or undue association and, therefore, ruled the registration for “EuroBM” void, also determining the immediate cessation of use, under a possible daily fine of R$ 5,000.00.
In addition to the trademark infringement itself, the judge highlighted that Defendant’s conduct undermined Plaintiff’s right to protect its unique image, namely, the integrity of its signs – including its nickname – among consumers. That could indirectly jeopardize the management strategy of its trademarks portfolio. In other words, the decision is also standard-setting because it recognized and applied the theory of dilution (Article 130 of Brazilian IP Law).
The ruling became final and unappealable on August 09, 2019, and is ready to be enforced.
It should be noted that this understanding is not new, and in fact has already been subject of discussions involving “BMW” trademarks, including an infringement lawsuit against the use of the sign “BMPOWER”. In the latter case, Judge considered that the use of acronym “BM”, regardless of the name it is followed by, would always have the potential to violate trademark “BMW”.
In any event, the recent ruling represents a firm and bold step in protecting nicknames of famous trademarks, and leads to the conclusion that such signs represent a very strong asset within a company’s intellectual property – what justifies strict measures towards its defense.