Do you remember that in October 2021, CEO Mark Zuckerberg announced that his company was changing its name from Facebook to Meta? This decision has led to a legal quagmire for Meta in Brazil. The Court of Appeal of São Paulo, in a decision on 28. February ruled that Meta Platforms Inc. must change its name in Brazil within 30 days or face a daily fine of R $100,000 (ca. 18.000 EUR).
The legal dispute arose from a lawsuit filed by "Meta Serviços em Informática", a tech Brazilian company founded more than 30 years ago that owns the word and figurative trademarks "Meta," registered in 2008/2009 at Brazil's National Institute of Intellectual Property (INPI) for data analysis and processing services (“Brazilian Meta”).
Despite this, Meta Platforms Inc. also obtained a registration at the INPI for its "Meta" trademarks, as its operations were directed to downloadable software, hardware, and social media.
The “Brazilian Meta" has objected to the trademark registration of Meta Platforms Inc. and has also filed the mentioned lawsuit before the Court of Appeal of São Paulo demanding that it ceases to use the trademark Meta in Brazil, as the name change from Facebook to Meta in 2021 has caused confusion among consumers and damaged Brazilian Meta's business.
As Meta Platform Inc. has no headquarters in Brazil, the “Brazilian Meta" was wrongfully involved in several lawsuits that should have been directed against the US company; it had its Instagram account deactivated because it was "pretending" to be someone else; it has faced publications of articles in essential press vehicles, associating it with Facebook; and it has received numerous phone calls and visits from users looking for solutions to their account problems with Facebook, Instagram, and WhatsApp.
Although the descriptions of services and products identified by the trademarks are not identical, the Court states that there is no doubt about the intersection between the services provided by the parties, especially given the extensive scope of the activities described in the registration granted to the “Brazilian Meta," which encompass any services related to the analysis and data processing.
The Court decides that, given the impossibility of peaceful coexistence of both trademarks, the right to exclusivity in their use must fall to the person who first applied for registration, i.e., to the “Brazilian Meta".
On 15 March 2024 the order preventing to use the trademark “Meta” was suspended after Meta Platform Inc. appealed against the decision. Meta Platforms Inc. argued that if it has to comply with the order, it could result in temporary unavailability of some of its products and services in the country.
The legal dispute on the trademarks “Meta” highlights the importance and the economic value of a well-planned trademark (and generally IP) strategy.
We will keep you updated on the further developments.