Introduction

Discovering that your desired brand name is already registered by another company can be a frustrating and challenging situation. Whether you’ve been using the name for years or just started your business, realizing that another entity has exclusive rights to the trademark can lead to potential legal and financial risks.

However, there are several steps you can take if you find yourself in this position. This article will guide you through the necessary actions to take when your brand is already registered by another company, including legal options, possible negotiations, and alternative solutions.

Why Does Trademark Registration Matter?

A trademark grants the owner exclusive rights to use a brand name, logo, or symbol in a specific industry. Registering a trademark with the National Institute of Industrial Property (INPI – Instituto Nacional da Propriedade Industrial) in Brazil ensures that no other company can legally use the same or a confusingly similar name within the same business category.

If another company has registered the brand before you, it may have the legal right to prevent you from using the name in commercial activities.

Step 1: Verify the Trademark Registration Status

Before taking action, confirm the actual status of the trademark registration:

• Search the INPI database to check if the trademark is active, expired, or pending approval.
• Verify the classification category of the registered trademark (Nice Classification System – NCL).
• Check if the trademark is word-based, figurative (logo), or combined (logo + name).

If the trademark is inactive or abandoned, you may still be able to register it.

Step 2: Assess Your Rights Over the Brand

If you have been using the brand for a long time, you may have certain legal rights even if another company registered it first.

• Prior Use of the Trademark (Uso Anterior): In some cases, businesses that can prove they were using a brand before the official trademark registration may have legal grounds to contest the registration.
• Unfair Registration (Má-fé): If you suspect the trademark was registered in bad faith (e.g., a competitor trying to block your business), legal action may be possible.

Step 3: Contact the Trademark Owner

If a company has already registered your brand, consider negotiating directly before pursuing legal action.

Possible negotiation options include:

• Trademark Licensing Agreement: You may negotiate a license to continue using the brand under agreed conditions.
• Trademark Purchase: If the trademark owner is willing, you can offer to buy the rights to the trademark.
• Coexistence Agreement: If both businesses operate in different markets, a formal agreement may allow both to continue using the brand.

Step 4: File an Opposition or Cancellation Request

If the trademark was recently registered, you may be able to challenge the registration:

• Opposition Period: After INPI publishes a trademark application, there is a 60-day period for third parties to file an opposition.
• Trademark Cancellation Request (Nulidade Administrativa): If the trademark was wrongfully registered, you can request INPI to invalidate the registration.
• Judicial Lawsuit for Trademark Annulment: If INPI rejects the cancellation request, a legal dispute may be necessary.

Step 5: Consider Rebranding as an Alternative Solution

If negotiations and legal actions do not succeed, rebranding may be the best option to avoid legal conflicts.

Advantages of Rebranding:

• Avoids costly legal battles.
• Creates an opportunity for a fresh brand identity.
• Prevents future trademark conflicts if expanding internationally.

Steps for a Successful Rebrand:

1. Choose a New, Unique Name – Conduct a trademark search before finalizing a new brand.
2. Secure a New Trademark Registration – Register the new name with INPI as soon as possible.
3. Update Branding and Marketing Materials – Modify logos, packaging, website, and social media.
4. Communicate the Change to Customers – Ensure your audience understands and embraces the rebrand.

Legal Options: When to Seek Professional Assistance

If you are unsure how to proceed, consulting a trademark attorney can provide valuable guidance. Legal professionals can:

• Conduct a detailed trademark search.
• Assist in negotiating with the trademark owner.
• File an opposition or cancellation request on your behalf.
• Represent you in court if necessary.

Conclusion

If your brand name is already registered by another company, it’s important to act strategically rather than panic. By verifying trademark status, assessing your legal rights, negotiating, or considering alternative branding solutions, you can find the best approach for your business.

Whenever possible, register your trademark early to prevent conflicts and ensure brand protection. Proactive measures today can save your business from costly legal issues in the future.