On January 18, 2023, the Fourth Panel of the Federal Supreme Court (STJ) ratified the previously established understanding that registered trademarks with low distinctive power, i.e. composed of elements in common use, evocative, generic, descriptive or suggestive, must bear the burden of coexisting with other similar trademarks, without enjoying exclusivity for their use throughout the national territory, as provided for in art. 129 of Law No. 9,279/1996 (Industrial Property Law).
The ruling also pointed out that the word elements of the trademark, when considered exclusively (“Rose” and “Blue”), would not be registrable under art. 124, items VI and VIII, of the Industrial Property Law.
Art. 124.
The following are not registrable as trademarks: VI – signs of a generic, necessary, common, vulgar or simply descriptive nature, when related to the product or service to be distinguished, or those commonly used to designate a characteristic of the product or service, in terms of nature, nationality, weight, value, quality and time of production or provision of the service, unless they are sufficiently distinctive; VIII – colors and their names, unless arranged or combined in a peculiar and distinctive manner; It was from this perspective that the Hon.
It was from this perspective that Reporting Justice Raul Araújo, in a ruling in a case before the Federal Regional Court of the 2nd Region, argued that “Rose & Blue” did not enjoy sufficient distinctiveness for the purposes of exclusive trademark registration with the National Institute of Intellectual Property – INPI.
In a brief review of the facts, the company, which sells children’s clothing, applied to the INPI in 2005 to register the “Rose & Blue” trademark, in order to guarantee its exclusive use throughout the country.
The INPI granted the registration, which included an apostille due to the non-exclusivity of the trademark’s word elements when considered individually. The ruling, then, originated from the denial of full protection to the trademark, giving rise to the judicialization of the matter aimed at reversing the federal authority’s judgment.
The aim of the ordinary action was to have the administrative act annulled, obliging the INPI to grant the registration to the company without any reservations.
However, the claim was dismissed in two instances, and the company appealed to the STJ claiming full protection of the “Rose & Blue” trademark throughout Brazil.
As initially stated, the Hon.
Justice Raul Araújo argued that the exclusive use of generic nomenclature was impossible, given that the signs “pink” and “blue” are closely associated with the women’s and men’s clothing segments.
He added that the expression is made up of the combination of two abstractly unregistrable signs.
Therefore, it is understood that the expression does not achieve sufficient distinctiveness to merit full protection such as that sought.
The Justice noted that “[t]he colors pink and blue are traditionally associated with the feminine and masculine genders, especially with regard to children and, although they do not describe the essential elements or make direct reference to the children’s clothing and accessories segment, they have a ‘connotative link between the mark and the designated activity.
It is clear, therefore, that in dismissing the special appeal, the rapporteur pointed out that the “Rose & Blue” trademark, because it has low distinctive power and is made up of elements in common and suggestive use, must bear the burden of coexisting with similar ones. To find out more, access the full Minutes of the Meeting: Revista Eletrônica (stj.jus.br)If you have any questions about Intellectual Property, please consult the specialist lawyers at PDK Advogados.
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