When a brand "dies": what the case of the Ping Pong and Ploc brands teaches about trademark forfeiture

It is widely believed that once a trademark is registered, its owner gains a sort of "eternal guarantee" of exclusivity over that sign. Indeed, a registration duly granted by the INPI (Brazilian National Institute of Industrial Property) assures the owner exclusive use across the entire national territory, as well as the right to assign the registration, license its use, and safeguard its material integrity or reputation, under Articles 129 and 130 of the Industrial Property Law – LPI (Law No. 9,279/96). But that is only the beginning.

The LPI, in its Article 142, sets forth the grounds for trademark registration extinction, among which is forfeiture (caducidade or revocation for non-use). Broadly speaking, forfeiture can be understood as the "death" of a trademark registration due to a lack of genuine use or use with a substantial alteration of the mark's distinctive character. In practice, it is the result of the owner's neglect or inertia; five (5) years after the registration is granted, a mark may be declared extinct when the owner (i) has not commenced use of the trademark in Brazil; (ii) has suspended use of the trademark for more than five (5) consecutive years; or (iii) has used the trademark with modifications that alter its original distinctive character as recorded in the registration certificate (Art. 143, LPI).

And that is precisely what happened to two of Brazil's most famous chewing gums: Ping Pong and Ploc. Intercontinental Great Brands LLC, a subsidiary of Mondelēz and the registration holder for these trademarks, had not commercialized the products protected by the marks since 2015 and, in the absence of proof of genuine use, had the forfeiture of these registrations declared by the INPI.

Forfeiture, however, does not occur automatically: it must be requested by an interested third party, provided legal requirements are met. In this regard, the applicant is required to demonstrate a legitimate interest (through a registration, trademark application, or other rights establishing their interest or operation in an identical or related market segment) and that at least five (5) years have elapsed from the grant date to the filing date of the petition. In other words, the investigation period into the mark's genuine use covers the five (5) years preceding the date of the forfeiture request, as illustrated in the example below:

Milestone	Date
Trademark Grant Date	01/03/2017
Third-Party Forfeiture Petition Date	05/13/2026
INPI Forfeiture Investigation Period	05/13/2021 to 05/13/2026

Therefore, once a forfeiture request is filed, the trademark owner is responsible for proving that the mark was genuinely used during the investigation period or for justifying any non-use based on legitimate grounds.

The INPI Trademark Guidelines (Section 6.5) outline several documents that can be used to prove trademark use, such as tax invoices, fiscal receipts, commercial invoices, service contracts, product photos, packaging, wrappers, tags, stickers, catalogs, flyers, commercial proposals, news articles, advertising materials, website pages, notarial certificates, and registration records for participation in trade shows or commercial events.

In the case of the Ping Pong and Ploc brands, the forfeiture requests were filed by ASC Brands & Entertainment, which had previously filed trademark applications for those names. Although Intercontinental Great Brands LLC expressed an intention to relaunch the products identified by the marks, it failed to provide sufficient documentation to prove genuine use during the investigation period.

In this context, forfeiture underscores the critical importance of ongoing trademark portfolio management. Beyond securing a registration with the INPI, it is essential to monitor the mark's market usage, preserve documentation proving its use, and evaluate whether the manner in which it is being applied remains consistent with the registration. Indeed, the Ping Pong and Ploc case demonstrates that regardless of a company's size or a brand's history, abandonment can lead to the loss of rights.