When Inspiration Becomes Risk: TRF-2 Upholds Trademark Nullity for Imitating New Balance's Logo

The business environment and the risk of improper registration

In today's competitive landscape, companies across various sectors invest significantly in visual identity, brand, and reputation as strategic assets. For entrepreneurs seeking to distinguish their products or services in the market, registering a trademark with the National Institute of Industrial Property (INPI) is an essential step. However, failure at this stage or the improper use of an already established trademark can generate serious legal and financial risks.

The recent ruling by the Federal Regional Court of the 2nd Region (TRF-2, 1st Specialized Panel), which upheld the nullity of the registration of figurative trademark No. 919795650, owned by a footwear and apparel company, for imitating the New Balance logo, offers an important warning for entrepreneurs and managers dealing with brand identity, graphic design, and registration with the INPI.

The legal framework – Article 124, XIX of Law 9.279/96

The TRF-2 decision was based directly on item XIX of Article 124 of Law 9.279/96 (the Industrial Property Law), which establishes as grounds for unregistrability or nullity of a trademark registration when it "reproduces or imitates another party's trademark, which the applicant is not authorized to use, in a manner likely to create confusion or association with a trademark previously registered and used in the country." Case law has consistently held that whenever there is significant similarity between graphic signs operating in the same market segment, there is a risk of confusion.

In the case under review, the panel found that the challenged logo, although containing alterations such as different angles or dashed lines, did not differ significantly from the New Balance symbol, resulting in what was characterized as "near identity" capable of misleading consumers.

It is also important to note that, under the law and case law, the notoriety or acquired distinctiveness of the prior trademark (in this case, New Balance, which has operated in Brazil and abroad for decades) reinforces the protection granted. The decision demonstrated that, when facing an already well-established trademark, greater rigor is applied to the analysis of conflicts between signs.

The market, the risk of confusion, and the "distance theory"

From a practical standpoint, the 1st Panel observed two central elements: (i) the proximity of the fields of operation — footwear and apparel — increased the likelihood of confusion; and (ii) the visual similarity of the signs was considered sufficient to generate improper association by the consumer.

The company that owned the challenged trademark also argued that "several similar trademarks coexist in the market" (the so-called "distance theory"), but the Court rejected this argument in the case of a well-known trademark, for which the margin of tolerance is reduced.

Thus, entrepreneurs must keep in mind that registering or using a visual identity that closely resembles another party's trademark, especially within the same or a closely related market segment, carries a high risk of nullification, prohibition of use, and damages.

Practical impacts for the company and guidance for managers

For entrepreneurs and brand managers, the decision brings some evident practical impacts: first, the investment made in visual identity and marketing may be lost if the registration is annulled or its use prohibited; second, there may be a need for product recalls, rebranding, inventory losses, or even an obligation to compensate the owner of the prior trademark for improper use. In this case, in addition to the nullity of the registration, the TRF-2 confirmed the prohibition on using the trademark and increased attorney's fees.

On the other hand, from a preventive standpoint, companies should adopt good practices: before launching a new brand or logo, conduct a prior-art search with the INPI and, if possible, internationally (depending on the scope of operations), check whether similar trademarks exist in the same or related segments, and assess whether the logo is registrable and does not resemble already established symbols.

At the time of registration, it is advisable to document the creative process, the foreign or domestic sources used, as well as any consultation with the legal department to assess the risk of conflict. If a registration is already being challenged or there is an evident risk, negotiating a license or assignment of the trademark may be an alternative. For companies operating internationally or planning to expand, registering the trademark in other countries is a recommended measure, avoiding surprises such as recognition of a prior trademark due to use abroad.

Another important practical point for managers is the need for continuous monitoring of the company's trademark portfolio and the competitive market. The mere peaceful coexistence of similar trademarks does not automatically mean that such a situation will be accepted by the INPI or the courts, especially if the prior trademark is well known. The company should assess whether its trademark could potentially cause improper association, risk of confusion, or unfair exploitation of another's reputation. Adopting licensing contract clauses, monitoring digital platforms, and establishing internal brand identity approval procedures are measures that add legal certainty.

In summary, the TRF-2 ruling reaffirms that trademark protection in Brazil, especially for well-known brands, is robust and requires companies — including micro, small, and medium-sized businesses — to pay rigorous attention to the conception, registration, and use of their visual identity. Managers or entrepreneurs who ignore this context risk not only the registration itself but also the continued use of a trademark, generating unexpected costs and reputational harm.

Given this reality, it is recommended that companies rely on specialized intellectual property legal counsel from the trademark conception stage through registration and post-registration monitoring. Preventive action proves far more efficient — and less costly — than correcting vulnerabilities after a conflict has occurred. In case of doubts about registration, prior-art searches, the risk of conflict, or licensing and international protection strategies, seeking support from specialized attorneys is a prudent measure. One principle remains valid for companies of all sizes: recognizing that a trademark is not merely a design, but a right that directly impacts business assets and market competitiveness.