A company may build a recognized brand, attract customers, and develop a valuable commercial asset before realizing that the chosen name faces obstacles to registration.
The case involving the CazéTV trademark illustrates this risk.
The Brazilian National Institute of Industrial Property (Instituto Nacional da Propriedade Industrial – INPI) rejected the application to register the “CazéTV” trademark in Class 41, which covers services related to entertainment, audiovisual production, and journalism.
The application was filed in January 2023, but the INPI identified prior registrations containing the element “Casé” in the same class. The assessment considered the possibility of conflict between the signs.
The decision may still be challenged through an administrative appeal. However, the case provides an important warning for companies across different sectors: the commercial development of a brand should be accompanied, from the outset, by a legal protection strategy.
Can a well-known brand have its registration application rejected?
Yes.
Public recognition does not automatically guarantee approval of a trademark application.
During its examination, the INPI assesses whether the sign complies with legal requirements and whether there are previously filed or registered trademarks that could create confusion or improper association.
This comparison is not limited to completely identical names.
The analysis may consider similarities that are:
- Graphic;
- Phonetic;
- Visual;
- Conceptual;
- Commercial;
- Related to the target consumer audience;
- Related to the products and services identified.
Therefore, minor spelling changes or the addition of a word may not always eliminate the risk of conflict.
Popularity is not the same as legal protection
Companies often associate the commercial strength of a brand with the existence of legal protection.
These are different matters.
A brand may have millions of followers, nationwide exposure, commercial agreements, and significant market recognition without holding a granted registration in the relevant class.
Likewise, popularity does not automatically qualify a sign as a highly renowned trademark.
Highly renowned trademark status is a specific legal designation formally recognized by the INPI and provides special protection across all fields of activity. This status does not arise solely from audience size, media exposure, or the commercial value of the brand.
What are the risks of registering a trademark only after launch?
When a company launches a name before assessing its availability, the risk is not limited to the administrative rejection of the trademark application.
Commercial, financial, and operational impacts may also arise.
These may include:
- The need to change the name of the company, product, or service;
- Rebranding of channels and platforms;
- Replacement of packaging and institutional materials;
- Loss of marketing investments;
- Withdrawal of advertising campaigns;
- Conflicts with prior rights holders;
- Administrative or judicial disputes;
- Difficulties in licensing the trademark;
- Obstacles to international expansion;
- Uncertainty in mergers, acquisitions, and investment rounds;
- Reduction in the perceived value of intangible assets.
The more established the brand becomes, the more complex and costly a potential change may be.
Should trademark registration take place before launch?
Ideally, the legal assessment should be carried out during the naming process, before significant investments are made in visual identity, technology, advertising, and market positioning.
Early filing allows the company to identify risks and make decisions with greater legal certainty.
However, filing an application does not automatically guarantee registration. The application will be examined by the INPI and may be subject to oppositions, office actions, or rejection.
Trademark registration should therefore be viewed as a strategic process rather than merely the completion of an administrative form.
Should a trademark search consider only identical names?
No.
A search limited to the exact name may create a false sense of security.
The assessment should consider:
- Spelling variations;
- Similar word roots;
- Similar pronunciations;
- Abbreviations;
- Translations;
- Figurative elements;
- Composite trademarks;
- Names used in related business activities;
- Signs that may create an association between businesses.
The search should also take into account the relevant market context and the degree of similarity between the products and services involved.
Why is choosing the correct INPI classes important?
The trademark system is organized under the Nice Classification, which divides goods and services into different classes.
The same company may require registrations in more than one class depending on its business model.
A content-related brand, for example, may operate in areas involving:
- Audiovisual production;
- Advertising;
- Events;
- Software;
- Content broadcasting;
- Licensed products;
- Apparel;
- Education;
- Entertainment.
Registering a trademark only for the company’s initial activity may leave relevant areas of future expansion without adequate protection.
For this reason, planning should consider not only what the company offers today, but also what it intends to develop in the coming years.
Sub-brands, channels, and products also require protection
Many companies register only their corporate trademark while leaving other names with an independent market presence unprotected.
This risk may affect:
- Products;
- Services;
- Applications;
- Platforms;
- Channels;
- Podcasts;
- Programs;
- Events;
- Ongoing campaigns;
- Loyalty or benefits programs;
- Technology solutions;
- Business lines.
As these names begin to generate recognition and revenue, they may also become valuable intangible assets.
How can a preventive trademark strategy be structured?
A trademark protection strategy can be organized into several stages.
- Map the names currently in use
The company should identify all corporate, commercial, digital, and product-related trademarks used throughout its operations. - Establish priorities
Not every name will have the same strategic relevance. It is important to identify which signs concentrate the greatest reputation, investment, and revenue potential. - Conduct prior rights searches
Before launch, searches should be conducted for both identical and similar trademarks. - Assess legal feasibility
Search results should be analyzed considering the similarity between the signs and the relationship between the respective goods and services. - Map current and future classes
Planning should include both the activities already carried out and anticipated areas of expansion. - File trademark applications
Applications should preferably be filed before public disclosure and before major investments are made. - Monitor proceedings
Office actions, oppositions, decisions, and deadlines should be continuously monitored. - Monitor third parties
Companies should monitor subsequent applications that may conflict with their trademarks. - Review the trademark portfolio
New products, channels, services, and markets may require additional registrations.
Trademark protection is also a matter of corporate governance
Trademarks are not merely communication assets.
They may represent reputation, trust, relationships with consumers, expansion capacity, and revenue generation.
Trademark protection should therefore be integrated into decisions involving:
- Product and service launches;
- Marketing planning;
- Contracts;
- Licensing;
- Franchising;
- Partnerships;
- Investments;
- Geographic expansion;
- Mergers and acquisitions;
- Business valuation.
The CazéTV case draws attention due to the level of public recognition involved, but its main lesson applies to companies of all sizes: protecting a trademark only after it has become valuable can be more complex, costly, and risky.
PDK Advogados’ Intellectual Property practice advises on trademark clearance and legal feasibility assessments, registration strategies, proceedings before the INPI, and the strategic management of trademark portfolios.
