Unanimous preliminary decision by the Court of Justice of São Paulo determining a period of 30 days for the Facebook group to stop using the Meta brand in Brazil allows the strength of the name and its impact on the reputation of organizations to be examined using the rules of law . The decision followed a request from Meta, a digital transformation consultancy, based in the State of São Paulo, founded 34 years ago, which has global operations, 300 clients in almost a dozen countries and more than 3 thousand people on its staff. According to the members of the 1st Reserved Chamber of Business Law, in addition to the name, the fact that the two companies are part of the same segment can cause confusion among consumers and even public bodies, among others.
In the trial, held on Wednesday (28/9), it was established that the North American group must also inform, in its communication channels in the country, that the name Meta belongs to a Brazilian company with no connection to Facebook, or that is, the digital transformation consultancy, which was founded in 1990 and requested, in 1996, the registration of the brand, granted in 2008 by the INPI. Facebook's adoption of the name occurred about 20 years after Meta, in 2021, as part of a rebranding strategy aimed at its ambitions in developing the metaverse. The judges recognized the impossibility of peaceful coexistence, and the exclusivity right of the company that first filed the trademark registration must prevail.
In the process, the Brazilian technology and innovation company records the inconvenience and losses it suffers due to the situation and which have consequences for its reputation and business. The related damages range from legal proceedings in which she is wrongly named as a defendant – as they should have been allocated to the company that manages Facebook – to extrajudicial notifications about problems related to the American company's channels, such as letters from Procon. In addition, he claims to receive notifications in administrative procedures to present a defense or letters sent by the Civil Police and the Judiciary, requesting a breach of confidentiality and blocking of accounts on Instagram and Facebook. Still in the process, the consultancy reports being the target of insults and complaints on its social networks that were directed at the American group. And it claims to be negatively confused on company evaluation portals, which would be harming people recruitment and selection processes.
“The national legal system, at no time, makes a distinction or grants a benefit to a foreigner who seeks to appropriate the sign whose consolidated use and registration was previously attributed to the national holder”, it being clear that “the use of the “META” sign by Facebook, in Brazil, clearly, it not only deprives the exclusivity right previously assured to the Consultant (the author) and imposes on her the losses resulting from the confusion faced in the market, but also punishes her with the reputational stain of being interpreted as the one who is seeking taking advantage of someone else’s trademark from the foreign giant (reverse confusion) when, on the contrary, it was the latter that appropriated the previously registered sign without observing the national trademark system.”
Excerpt from judge Cesar Ciampolini's vote
These situations burden and overload a company's organizational structure, entail enormous costs and bring risks to the image and reputation of organizations. In itself, social networks already require constant monitoring to safeguard companies from threats such as fake news, misinformation and hate messages. Confusion between brands increases this risk in the digital environment and beyond. In the case of this conflict, the magnitude of one of the parties, one of the largest technology companies in the world, could discourage the most unwary from moving in search of protecting their own brand. However, reputation management must be strategic and permanent – and brand protection is part of the journey to obtain long-term results, perpetuate the company and build a legacy.
