TRF-2 upholds cancellation of trademark that imitated New Balance logo, reinforcing distinctiveness standards in the fashion market

The 1st Specialized Panel of the Federal Regional Court of the 2nd Region unanimously upheld the annulment of the figurative trademark registered by Club Happy, concluding that the sign reproduced or imitated the previously registered New Balance logo — a mark widely used and recognized in both Brazilian and international fashion markets.

The Court determined that the visual similarity between the signs was strong enough to create a likelihood of confusion among consumers, especially given that both companies operate in the same segment of footwear and apparel. Brazilian industrial property law prohibits the registration of trademarks that reproduce or imitate earlier signs when such similarities may induce consumers to error or create an undue association regarding the origin of products.

The decision emphasized that small graphic differences — such as minor adjustments in angles or line tracing — were insufficient to grant distinctiveness to Club Happy’s logo. According to the Court, the signs were “almost identical,” undermining the protection afforded to New Balance, which has used its logo for decades. Longstanding use increases a mark’s legal protection, particularly when it acquires widespread market recognition.

The ruling also addressed the concept of “acquired distinctiveness.” When a brand becomes strongly associated with a specific graphic element over time, its legal protection is elevated, reducing the tolerance for the coexistence of similar signs. Because New Balance is widely recognized in its sector, the Court adopted a stricter standard in its assessment.

Club Happy attempted to rely on the “theory of distance,” arguing that several brands coexist with similar visual signs. The Court rejected this argument, clarifying that the theory does not apply when the earlier mark has strong notoriety, which demands stricter protection against imitation.

In addition to confirming the cancellation of the trademark previously granted by INPI, the Court prohibited Club Happy from using the mark and increased attorney’s fees. This case illustrates the importance of conducting proper legal analysis, market research, and trademark clearance before developing or registering a visual identity.

Building a strong fashion brand requires strategic legal oversight, technical evaluations, and preventive action. A single error can lead to the loss of visual identity, financial damage, and prohibition of use.

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