The differences between the trademark and business name often cause some confusion:
Trademark - distinguishing symbol a business use to identify a product, as per establishes the Article 122 da lei 9.279/1996 – Intellectual Property Law - LPI, registered with the INPI – National Industrial Property Institute.
Business name - a trade name is the name a business uses to identify itself, as per defined by the Civil Code, article 1.155
The differences between these two terms do not stop there. There is a distinct body responsible for their registration, and different types of protection for each one, as follows:
The business name is protected within the jurisdiction of that trade board where the company was registered. To broaden the scope of protection the company has to file equests with the other trade boards (Normative Instruction IN/DNRC no. 93/2002).
The business name protection ensured by the trade board must be seen as a relative safeguarding, since the oldest business name registered does not protect a company against similar business names of a different sector, mainly when there are no claims on confusion among customers, losses or any other issues (RESP 262.643/SP).
The owner of a trademark has exclusive rights on particular products or services, within the federal states, during the time granted by the INPI (National Industrial Property Institute) register.
The Article 5, section XXIX of the Federal Constitution, and the LPI (Intellectual Property Law) under the article 124, section V, and article 129, respectively set forth the legal protection provisions for both business name and trademark.
Considering the premise that the similar business name will be used in a different sector and in a way to avoid confusion, the principle of anteriority alone only will not suffice to investigate confusing similarities.
We also have to take into account two underlying principles of Intellectual Property law:
(i)principle of territoriality focusing on territorial trademark rights
(ii) principle of specificity where, except by “highly renowned” trademarks stated by the INPI, the trademark rights are linked to a specific product or service in order to avoid mistakes.
The article 124, section V, Intellectual Property Law, focusing on trademark and business name rights establishes that for the impediment of a business name with a national register, it is required:
(i) a business name with a register that is not limited to some states, but holding exclusive usage license nationwide, as per article 2, §2, section “a”, IN/DNRC No. 93/2002;
(ii) the reproduction or imitation is likely to cause confusion , connection or association. Apart from that, coexistence is possible.
It is highly recommendable counting on a professional consultancy firm when applying for business name and trademark in Brazil.
* GABRIEL DE CARVALHO JACINTHO is an accounting executive and arbitrator in Brazil and strategic partner of The Interamerica Group.