After the Beauty Fair, held in São Paulo in September 2024, some consumers were intrigued by the presence of the HUDA BEAUTY trademark, given that the company does not operate in Brazil. However, the trademark showcased at the cosmetics fair was not the globally recognized one but rather a Brazilian-registered trademark with the same name.
This situation raised several questions, such as: “Will the original HUDA BEAUTY be able to sell its products in Brazil, considering the prior registration by a Brazilian company?”, “Does the first registrant always have exclusive rights to the trademark?”, and “If the Brazilian company registered it first, can it use an identical or similar logo?” In this article, we will address these and other key aspects of trademark registration and the rights of trademark owners against third parties.
The Background of Huda Beauty
Founded in 2013 in the United Arab Emirates by makeup artist and influencer Huda Kattan, Huda Beauty quickly established itself as one of the leading trademarks in the beauty industry, offering products such as lipsticks, eyeshadow palettes, highlighters, and foundations. The trademark gained popularity in Brazil through reviews by beauty bloggers.
Regarding trademark protection in Brazil, in April 2017, a Brazilian third party applied for the registration of the HUDA BEAUTY trademark before the Brazilian Patent and Trademark Office (BPTO), and the registration was subsequently granted. In the same year, in July, Huda Kattan’s company filed for trademark registration in Brazil, but the application was rejected due to the pre-existing registration.
The company pursued administrative measures with the Brazilian PTO, all of which were rejected. Currently, they await the judicial decision on nullity lawsuit, in addition to the ruling on a forfeiture request filed in January of this year.
Key Trademark Protection Principles in Brazil
Two fundamental principles govern trademark protection in Brazil:
- Principle of Prior Registration: This principle grants exclusive rights to the first individual or company to register a trademark with Brazilian PTO. Whoever registers first has priority and exclusivity in using the trademark over any subsequent applicants.
- Principle of Territoriality: Trademark rights are limited to the country in which they are registered. In Brazil, Brazilian PTO registration grants protection only within Brazilian territory. Therefore, a trademark registered in another country does not automatically receive protection in Brazil unless it is also registered locally.
Based on these principles, the initial response is that HUDA BEAUTY, as a global company, cannot market its products or use the trademark name in Brazil since the exclusive rights were granted to the Brazilian entity that registered it first.
International Protection: The Paris Convention and Bad Faith Registration
However, these principles are not the only ones that apply. The Paris Convention for the Protection of Industrial Property, adopted in 1883 and ratified by Brazil, establishes common guidelines among member countries to protect trademarks, patents, and other intellectual property rights. One key aspect of the Convention is preventing the unauthorized use of well-known trademarks by third parties, particularly in cases of bad faith.
Article 6bis of the Paris Convention
Article 6bis of the Paris Convention specifically addresses the protection against third parties registering well-known trademarks in bad faith. According to this article, if a trademark is widely recognized in a member country of the Convention, even without formal registration, the authorities in that country are obligated to refuse or cancel any registration by third parties attempting to unfairly benefit from the trademark’s reputation. This applies when there is an evident intention to exploit the trademark’s notoriety without the legitimate owner’s consent.
How Article 6bis Affects the HUDA BEAUTY Case
In practical terms, Article 6bis protects internationally famous trademarks, like Huda Beauty, from being registered by third parties looking to profit or create confusion among consumers. Even though the trademark was not initially registered in Brazil, if it is widely recognized and the local registration is deemed fraudulent, PTO or the judiciary may rule in favor of the international company.
The Convention also emphasizes that bad faith refers to attempts to mislead consumers or harm the legitimate owner of the trademark. The concept of bad faith is crucial since it implies an intentional action to profit from the success or reputation of an already well-established trademark without proper authorization.
Final Thoughts
The case of HUDA BEAUTY in Brazil illustrates the critical importance of trademark registration, especially to protect against unauthorized use by third parties.
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