Trademark registration can be done by an individual. By someone who doesn’t own a business. Just think of a good name, check if it is available and hire IPlatam to register with the INPI. But what happens if, after a few years, this natural person sets up an enterprise in partnership? Whose brand is it?
Let’s imagine a situation to make the problem clearer. Bernardo is the chef of a renowned restaurant, but plans to set up a French bistro. Looking to the future, he spends hours thinking about the ideal name and he gets it: BISTROMBONE, the combination of “bistro” and “trumpet”, because the house will have live music, with jazz and blues quintets. Bernardo contacts Iplatam, pays INPI fees and becomes the owner of the brand.
A year later, an investor, Teodoro, appears to help him make his dream come true. With Teodoro’s money, plus Bernardo’s resources and experience, Bistrombone leaves the paper and soon catches the attention of the clientele, the specialized media, and becomes a success. But whose brand is it? Just from Bernardo? Or did it belong to the company, the CNPJ that was opened in partnership with Teodoro?
Whose brand is it: Bernardo’s or the company’s?
The brand belongs to Bernardo. He registered with his CPF, as the bistro didn’t even exist yet, it was just a distant project. As a matter of fact, even with the success of the house, the INPI does not officially know of the existence of Bistrombone, and would not even have reason to know, since its mission is not to monitor the use given to registered names. Summary: everything remains the same, nothing has changed. However, this is not the ideal solution, and we will explain why.
Whose brand is it: possibilities for change!
The assets of the legal entity (company) are not to be confused with those of the individual (partner). The restaurant may use the Bistrombone brand, but it does not own it. However, to avoid future problems between the bistro owners, discussions and legal complications in an eventual dissolution of the company, the best way is to transfer the ownership of the brand to the company or draw up a license agreement for the use of the name.
What are the differences?
With the transfer of ownership, the brand will become part of the restaurant’s assets. And that makes a difference, because the brand is also an asset, it’s worth money. A good example is the Mappin department store chain, which went bankrupt in 1999. Hardly anyone would buy the company’s estate, with all its debts. But many entrepreneurs would fight to buy the Mappin brand, which is still very strong in São Paulo and would certainly attract customers. Proof of this is that Marabraz acquired the name for R$ 5 million in a judicial auction and will relaunch the store only in e-commerce, in the first half of 2020.
In the second possibility, brand licensing, partner Bernardo will continue as the sole owner of the Bistrombone expression, but the restaurant will be able to use it without taking any risks.
What are these threats?
Well, imagine that the partners had a disagreement and decided to end the business. The fight was ugly, the friendship ended, and a lot of rancor was left. Bernardo may decide that he needs to be remunerated for having loaned his brand to the restaurant for so long, without licensing. If he goes to court and asks for compensation, Teodoro will probably be sentenced to pay that debt.
That’s why it’s always good to make everything official, while everyone is friendly and happy! IPlatam has professionals specialized in trademark registration, trademark transfer and trademark licensing. When someone asks “whose brand is it?”, you already know: click here and talk to IPlatam’s lawyers!
