In the field of trademark law, specifically when applying Article 7 of the Washington Convention, one of the main challenges is proving that the trademark applicant had prior knowledge of the existence and use of an opposing trademark in another contracting State.
Traditionally, the trademark authority has relied on the figure of circumstantial evidence (or presumptions) to consider this requirement fulfilled. Although the final conclusion in opposition disputes remains the same—the presumption of knowledge on the part of the applicant—the legal reasoning of the examiners has undergone a subtle yet profound shift in focus.
Historically, the doctrine was based on the passive impact of the global environment on the merchant. Decisions such as Resolution No. 13128 of 2010 (AEROPOSTALE) and Resolution No. 2045 of 2022 (STILETTO), along with a vast line of jurisprudence (GOETZE, SHYLA, SAPPORO, among others), based prior knowledge on the following pillars:
- The macroeconomic environment: It was argued that phenomena such as globalization, the boom in international trade, and advertising expose consumers (and competitors) to global products.
- The implausibility of coincidence: It was established that the known fact was the identity or extreme similarity between two trademarks.
- The logical presumption: Given that it is highly unlikely for two entrepreneurs to independently come up with the exact same fanciful expression, the unknown fact was considered proven: prior knowledge.
- The figure of “slavish copying”: The faithful or literal reproduction of a sign generated a strong indication that the applicant knew of the original trademark's existence at the time of filing their application.
At this stage, the internet and mass media were seen as channels that simply “allowed access” to information, making the trademark's existence a notorious worldwide fact.
Recently, the analysis has taken a turn towards a more active and demanding stance for the applicant. The authority no longer justifies knowledge solely on passive exposure to a globalized world, but bases it on the active tools the applicant has at their disposal.
The new reasoning is structured as follows:
- Availability of tools: The examiner points out that today there are technological advances in communication, global connectivity, the internet, and global advertising media available to the public in open markets.
- Capacity for verification: Due to these tools, it is assumed that the applicant is fully capable of conducting an internet search for the denomination they intend to register (for example, in the operating systems market).
- Deduction by omission or bad faith: If the sign was already being used by another entrepreneur in the same sector and the applicant decides to adopt it in a similar form, the authority deduces that the latter knew the opposing trademark because they had the technological means to discover it.
Furthermore, in First Instance rulings, this reasoning is reinforced by alluding to the fact that it is “precarious” (highly unlikely) for two entrepreneurs in the same sector to resort to such a close expression (with the same vowel sequence and graphic layout) without having had prior contact in commerce.
As evidenced in the recent argumentation, the conclusion of the rulings remains the same: to protect the original trademark and reject the illegitimate registration. However, the path to reach it has changed significantly.
By stating that the applicant “is capable of conducting a search for the denomination,” the trademark authority is moving from a simple presumption of knowledge to the creation of a standard of due diligence. In practice, this means that today it is no longer enough to claim ignorance about the existence of a foreign trademark; the current digital ecosystem demands that every entrepreneur conduct an exhaustive internet search before attempting to register a sign, assuming the risk that the omission of this search will be legally interpreted as a strong indication of prior knowledge and bad faith.
