Our client, a company in the agricultural sector, had its trademark application denied by the INPI (Brazilian Patent and Trademark Office) in classes 35 (business management) and 41 (education/entertainment), based on Article 124, VI, of the Brazilian IP Law (trademark considered generic). We filed a lawsuit to overturn this decision.
Victory in the First Stage
Regarding class 35, the judge accepted our argument that the trademark is not directly related to business management, thus changed the denial. However, for class 41, the denial was maintained due to a direct relation with television programs.
Appeal to the Second Stage: Total Victory
The Court reversed the decision for class 41, highlighting the contradictions of the INPI and recognizing the distinctiveness of the trademark as a visual set.
Main Arguments of the Court
- INPI’s Contradiction: The INPI had granted registration under class 38 (telecommunications) but denied it under class 41, which involves similar services.
- Protection of the Trademark Set: The Court understood that the distinctiveness comes from the whole composition of the trademark (name + design), not just the isolated terms.
- Legal Certainty: The change in criteria by the INPI creates legal uncertainty, undermining predictability for companies.
- Coexistence with Similar Trademarks: The company has the right to register the distinctive set without preventing competitors from using similar elements.
The TRF-2 (Federal Regional Court of the 2nd Region) ordered the INPI to grant registration under class 41 and imposed the payment of litigation costs.
Conclusion
This case reinforces the importance of consistency in INPI’s decisions, shows that evocative trademarks can be registered, and sets a precedent for new legal arguments in cases of alleged genericness. The ruling exemplifies how INPI decisions can be legally challenged, highlighting the evolving understanding of acquired distinctiveness by the use (Secondary Meaning).
