Genial Holding LTDA v. Brasil Plural Securities, LLC
- Paul Engelmayer
- 1:24-cv-05780
- U.S. District Court · Southern District of New York
- 13
In Genial Holding v. Brasil Plural Securities, Judge Engelmayer denied dismissal of two trademark claims but granted dismissal of the consumer-protection claim.
Genial Holding LTDA and Banco Genial S.A. may continue litigating their Lanham Act and New York common-law unfair-competition claims against Brasil Plural Securities, LLC, Brasil Plural Holdings, LLC, and Manuel Maria Monteiro Dias Fernandes Fernandez. The plaintiffs’ New York General Business Law §§ 349 and 350 claims were dismissed, while the defendants’ Rule 12(b)(6) motion was denied as to the other two counts.
What happened
Genial Holding LTDA and Banco Genial S.A. accused Brasil Plural Securities, LLC, Brasil Plural Holdings, LLC, and Manuel Maria Monteiro Dias Fernandes Fernandez of using the plaintiffs’ Brasil Plural trademarks beyond an alleged license. They brought federal trademark, New York unfair-competition, and New York consumer-protection claims.
The defendants argued that a 2018 agreement transferred trademark rights to them or that the plaintiffs lacked U.S. rights. The court said the agreement did not clearly transfer ownership and that the plaintiffs had plausibly alleged trademark ownership, confusion, and bad faith. But the court found that the consumer-protection claims did not allege a specific, substantial injury to the public beyond ordinary trademark harm.
Judge Engelmayer denied the motion to dismiss Counts One and Two and granted the motion to dismiss Count Three. The federal trademark and New York unfair-competition claims therefore proceed, and discovery was scheduled to begin.
The detailed version
- Genial Holding LTDA v. Brasil Plural Securities, LLC · No. 1:24-cv-05780
- Paul Engelmayer
- May 20, 2025
Background
Genial Holding LTDA and Banco Genial S.A. sued Brasil Plural Securities, LLC, Brasil Plural Holdings, LLC, and Manuel Maria Monteiro Dias Fernandes Fernandez. The plaintiffs alleged that the defendants misappropriated and improperly used the “PLURAL” and “BRASIL PLURAL” trademarks after the defendants’ authorization to use the marks ended or was exceeded.
The plaintiffs asserted three counts: (1) unfair competition and false designation of origin under Section 43(a) of the Lanham Act; (2) unfair competition and misappropriation under New York common law; and (3) deceptive acts, deceptive practices, and false advertising under New York General Business Law §§ 349 and 350. The defendants moved to dismiss the amended complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6).
The parties’ relationship included a 2018 agreement under which Fernandez acquired all shares of BP Holdings. The agreement did not mention the trademarks. The plaintiffs alleged that they retained ownership and merely licensed the defendants to use the marks for limited business purposes. They also alleged that the defendants later used the marks on websites and investment funds, applied to register similar marks, and created confusion about their affiliation with the plaintiffs.
Court’s Analysis
Lanham Act claim. The court held that the amended complaint plausibly alleged the elements of a Section 43(a) claim: services were involved, interstate commerce was affected, and the defendants’ use of the marks was likely to cause confusion or deception about affiliation or origin.
The defendants argued that the 2018 agreement transferred ownership of the marks. The court rejected that argument at the pleading stage because the agreement was silent about the marks and did not clearly transfer trademark ownership. The court stated that the ownership issue could require discovery and examination of the parties’ business context, negotiations, and intent. The court therefore denied the motion to dismiss Count One, without prejudice to the defendants’ stated right to later seek summary judgment based on a lack of evidence of trademark ownership.
New York common-law claim. The court held that the amended complaint adequately alleged both required elements of New York common-law unfair competition: a likelihood of confusion and bad faith. The allegations supporting bad faith included the defendants’ alleged knowing use of the marks, applications to register similar marks, prominent use of “PLURAL” and “BRASIL PLURAL” on a new website, and alleged misrepresentation of Fernandez’s relationship with Banco Genial. The court denied the motion to dismiss Count Two.
New York consumer-protection claims. For claims under General Business Law §§ 349 and 350, the court explained that a plaintiff must allege a consumer-oriented deceptive act, material misleading conduct, and injury. In trademark cases, the court said, the plaintiff must allege a specific and substantial injury to the public beyond ordinary trademark infringement or dilution.
The court found that the amended complaint alleged harm to the plaintiffs and possible confusion among the public, but did not allege the separate kind of public injury required under the court’s interpretation of the statutes. The court therefore granted the motion to dismiss Count Three.
Disposition and Next Steps
The court denied the motion to dismiss Counts One and Two and granted the motion to dismiss Count Three. The court directed the clerk to terminate the pending motions and ordered the parties to submit a proposed case-management plan providing for the close of fact discovery by the end of September 2025.
Read the full 13-page opinion on CourtListener, the free public archive maintained by the Free Law Project.