Common Use Expressions in the Industrial Property Law: Challenges and Limitations
The recent court decision that annulled the “Língua de Gato” trademark (portuguese for “cat tongue”), has highlighted crucial issues regarding the use of common expressions and the importance of distinctiveness in trademark protection, serving as a warning for companies seeking to protect their Intellectual Property assets.
Our attorneys Pedro Matheus and João Cláudio Henrichs provide an analysis of the impact of mutations in commonly used expressions as trademarks.
In the article published today, they discuss the phenomenon of trademark degeneration, a mutation that causes a mark to lose its original distinctiveness, as well as the concept of secondary meaning, where initially common signs acquire distinctiveness over time.
Common Use Expressions in the Industrial Property Law
“Common use” expressions, as the name indicates, are those customarily used by the people, and which are, thus, part of its linguistic heritage.
At first glance, there is no prohibition to the registration of common use expressions part of the vocabulary, as trademarks. However, a problem arises when one intends to register a common use expression to identify products or services with which it has a relation, something that is barred by article 124, VI of the Industrial Property Law (Law nº 9.279/96 – IPL), which states that a sign shall not be register if it is “of a generic character, necessary, common, vulgar or simply descriptive, when it is related to the product or service to be distinguished, or that is commonly used to designate a characteristic of the product or service, regarding its nature, nationality, weight, value, quality and time of production or of service rendering, except when having a sufficiently distinctive form”.
The idea behind the prohibition, therefore, is to avoid a seller or service provider seizing a word or expression commonly used to refer to a product or service, for example, hindering its use by competitors.
Recently, a merit decision regarding this matter (registration of a trademark formed by a common expression) was issued, referring to the word trademark “língua de gato” (Portuguese for “cat tongue”), and the main basis of the decision to cancel the relevant trademark was the recognition by the Court that this expression was commonly used by competitor to refer to a kind of product.
With the decision, the exclusivity of the mark “língua de gato” to identify chocolates and other similar products was removed, allowing other chocolate manufacturers, including Cacau Show, the plaintiff of the lawsuit, to use the expression to describe and identify similar products.
Recent Case of Nullity of the Granting of a Trademark Registration Due to Being formed by a Common Use Expression
The decision mentioned above received attention in the IP Circle. The Judge of the 12th Federal Court of Rio de Janeiro, Laura Bastos Carvalho, issued the sentence in a lawsuit filed by Cacau Show, cancelling the registration for the word mark “língua de gato”, previously granted in favour of Kopenhagen, in class 30, to identify several products, among which chocolates.
In her reasoning, the judge considered that the expression “língua de gato” is of common use and possesses a notorious descriptive nature when used to identify a certain form of chocolate. According to the judge, several competitors used the expression to describe oblong and flat chocolates before 2016, the year in which the registration was granted to Kopenhagen1
Thus, the registration of a “common” expression as a trademark is not infrequent and can cause problems to its owner even years after the registration is granted.
In the referred case, the Judiciary understood that the expression “língua de gato” was already of common use, going so far as to mention the use of said expression to refer to oblong and flat chocolates since the eighteenth century, highlighting that the owner of the registration did not “invent” the chocolate’s shape and the expression used to name it.
What happens, though, when there is a “mutation”? That is, when a specific expression used as a trademark becomes common with time or, on the contrary, when a common expression becomes distinctive?
Degeneration of a trademark
The first question above, formulated from the “língua de gato case”, brings forth relevant discussions about the matter of degeneration of a mark. This phenomenon, also known as vulgarization, is a mutation that leads to the loss of the previous distinctiveness of the mark.
This occurs when the mark becomes a reflection of the common name, form or shape for which a product or service is generically designated by consumers and competitors. The degeneration jeopardizes the mark’s protection, since Brazilian legislation forbids the protection of common or generic expressions2
Brazil possesses several typical cases of trademark degeneration. For example, the mark “DANONE”, which is currently commonly used to identify any type of yogurt, among other more notorious examples, such as the mark “GILLETTE”, used by the population to refer indiscriminately to any shaving blades.
If one was to ask the holders of such marks how beneficial it is to them that consumers will associate their mark with any other competitor product, and may or may not acquire their own product, after all, “it is all DANONE/GILLETTE”, one would possibly not receive a positive answer, since such use ends up undermining the trademark, since the consumer will not associate that mark with its owner’s products, but also with third-party products. Thus, even though it may seem positive, at a first glance, degeneration may lead to unfortunate consequences.
The main attribute of a mark is exactly its distinctiveness3, the determining factor to differentiate it from the other existing marks in the eyes of consumers, which is lost when the mark becomes “vulgar”, since it loses this unique character of this type of IP right, the distinctiveness.
Secondary Meaning and Trademark Protection in Brazil
As mentioned above, the distinctiveness is an essential attribute of trademarks, and when a trademark loses such distinctiveness, considering that consumers’ perceptions of the mark may be modified with time, one observes the phenomenon of degeneration.
The Industrial Property Law states, in article 122, that it is possible to register as a trademark only distinctive signs that are visually perceptible and which are not mentioned in the legal prohibitions.
Differently from other countries, in Brazil, it is the Judiciary’s role to analyse and decide about the recognition of the so-called secondary meaning. This concept refers to the capacity of a sign, initially lacking distinctives or with a weak distinctiveness, to acquire it through a transformation process as time passes.
Esse processo ocorre quando uma palavra originalmente comum ou vulgar é deslocada de seu sentido semântico original, ganhando um novo significado. Após essa transformação, o sinal torna-se registrável, mesmo que anteriormente não o fosse, por vedação do artigo 124, inciso VI da LPI.
This process occurs when an originally common or vulgar word becomes dislodged from its original semantical meaning, acquiring a new one4. After this transformation, it becomes possible to register the sign, even if it was not possible previously, due to the hindering prohibition of article 124, VI, of the IPL.
As an example, one could mention “Casa do Pão de Queijo”, a vulgar expression that, due to the long period of use and the merits of its holder, became practically indissociable from a determined products and services provider, thus becoming registrable.
Thus, as opposed to degeneration, secondary meaning explains that words that were originally used as common expressions may become associated with a specific product or service, through a “binding phenomenon through association”5, making such expression a sufficiently strong mark that overcomes the vulgar or common characteristic of the expression and that, regardless of this characteristic, it will be associated and recognized by consumers. In the lawsuit previously mentioned herein, the owner of the word mark “língua de gato” pursued this recognition, however, the first instance decision did not agree with such arguments.
Conclusion and Implications
The decision from the 12th Federal Court of Rio de Janeiro to cancel the registration for the mark “língua de gato”, highlights the importance of the distinctiveness regarding trademark protection in Brazil. The Judge based the decision in the common and descriptive use of the expression, stressing that generic marks are not to be registered according to the Industrial Property Law, which is correct.
Even though the decision regarding the expression “língua de gato” may be object of an appeal, it serves as a warning to companies that seek to protect its IP assets.
The warning regards the owner’s need, when choosing their mark, to understand if a sign is a commonly used expression or not, to avoid the eventual cancellation of said mark, if it is registered, after years of use and investments, stripping the owner of the exclusivity that they thought they had.
The warning, however, is not limited only to the moment of the registration, and the distinctiveness of a mark must not be evaluated statically, since language and perceptions change and, with it, marks may lose or acquire distinctiveness based on degeneration and secondary meaning.
Understanding – and identifying – these changes is essential to allow the owner of a trademark to challenge the process of degeneration or benefit from secondary meaning.