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.<\/p>\n
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 \u2013 let alone unscrupulous third parties who see a \u201conce in a lifetime opportunity\u201d of associating their business with that of the \u201cnicknamed\u201d trademark.<\/p>\n
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 \u201cBMW\u201d, commonly and affectionately abbreviated as \u201cBM\u201d both by consumers and dealers themselves, stands out. After the BPTO mistakenly granted a registration for the word and design mark \u201cEuroBM\u201d to identify vehicle assistance services \u2013 what was followed by fruitless attempts to resolve the issue amicably \u2013 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.<\/p>\n
One of the main claims showed that the infringed trademarks are popularly known, in Brazil, by the acronym \u201cBM\u201d, obviously in clear reference to \u201cBMW\u201d. 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.<\/p>\n
The case obviously contained other elements to demonstrate Defendant\u2019s bad faith, as well as its desire to deliberately approximate to BMW: the use of \u201cEuro\u201d 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.<\/p>\n
In any way whatsoever, the Court ruling granted the initial claims as a whole, concluding that the mere evocation of sign \u201cBM\u201d, inside the market segment in reference, undoubtedly alluded to \u201cBMW\u201d trademark. It was even noted that \u201cthe Brazilian Association of BMW Dealers (\u201cABBM\u201d), which brings together resellers of the Claimants\u2019 trademark, does not contain the letter \u201cW\u201d at the end of its acronym\u201d.<\/p>\n
Given this scenario, the Judge found that the coexistence of signs \u201cEuroBM\u201d and \u201cBMW\u201d on the market was likely to lead to confusion or undue association and, therefore, ruled the registration for \u201cEuroBM\u201d void, also determining the immediate cessation of use, under a possible daily fine of R$ 5,000.00.<\/p>\n
In addition to the trademark infringement itself, the judge highlighted that Defendant\u2019s conduct undermined Plaintiff\u2019s right to protect its unique image, namely, the integrity of its signs – including its nickname \u2013 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).<\/p>\n
The ruling became final and unappealable on August 09, 2019, and is ready to be enforced.<\/p>\n
It should be noted that this understanding is not new, and in fact has already been subject of discussions involving \u201cBMW\u201d trademarks, including an infringement lawsuit against the use of the sign \u201cBMPOWER\u201d. In the latter case, Judge considered that the use of acronym \u201cBM\u201d, regardless of the name it is followed by, would always have the potential to violate trademark \u201cBMW\u201d.<\/p>\n
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\u2019s intellectual property \u2013 what justifies strict measures towards its defense.<\/p>\n","protected":false},"excerpt":{"rendered":"
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.<\/p>\n
Such nicknames, whether registered or not before the Brazilian Patent and Trademark Office (BPTO)…<\/p>\n","protected":false},"author":1,"featured_media":3506,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[95,106],"tags":[],"acf":[],"_links":{"self":[{"href":"https:\/\/ids.org.br\/en\/wp-json\/wp\/v2\/posts\/3504"}],"collection":[{"href":"https:\/\/ids.org.br\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ids.org.br\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ids.org.br\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/ids.org.br\/en\/wp-json\/wp\/v2\/comments?post=3504"}],"version-history":[{"count":0,"href":"https:\/\/ids.org.br\/en\/wp-json\/wp\/v2\/posts\/3504\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/ids.org.br\/en\/wp-json\/wp\/v2\/media\/3506"}],"wp:attachment":[{"href":"https:\/\/ids.org.br\/en\/wp-json\/wp\/v2\/media?parent=3504"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ids.org.br\/en\/wp-json\/wp\/v2\/categories?post=3504"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ids.org.br\/en\/wp-json\/wp\/v2\/tags?post=3504"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}