The 12th Federal Court of Rio de Janeiro made a decision that promises to have a significant impact on the chocolate market: the cancellation of the registration of the word mark ‘Língua de Gato’, owned by NIBS Participações SA, better known by the brand Copenhagen. The action was brought by AllShow Empreendimentos e Participações Ltda, alleging that the expression “Língua de Gato” is descriptive or common, and not distinctive of the Kopenhagen product.
The expression was created abroad in the 19th century to designate chocolates in the shape of a cat’s tongue, and has been widely used in Brazil and around the world for this type of product. The ruling highlighted that the term has become common and widespread, being used by several players in the market.
“The expression “Cat’s Tongue” associated with a chocolate in this exact shape is not a trademark. There is no distinctiveness in the verbal expression alone, without prejudice to other registered trademarks of Kopenhagen as a whole, but only the nominative expression. This would grant a particular exclusivity to a product name, as would be the eventual protection for the name chocolate itself, detracting from free competition. The expression constitutes the name of the product itself”, states Fábio Leme, partner at Daniel Advogados and legal representative of AllShow, author of the annulment action.
NIBS Participações SA argued that the trademark “Língua de Gato” had sufficient or acquired distinctiveness, claiming that the expression was never in common use or descriptive. However, Federal Judge Laura Bastos Carvalho decided to cancel registration No. 906.413.478, which covered chocolates and related products. The decision was based on article 124, VI of the Industrial Property Law (LPI), which prohibits the registration of descriptive or common terms for specific products.
“The specialized Federal Court demonstrated clarity and solid knowledge in interpreting the provisions of the Industrial Property Law, ensuring that the generic term remains accessible to the community, which is a result of the specialization of the jurisdictional provision. This decision reinforces the importance of paying attention to the INPI’s decisions, avoiding distortions sought by individuals and, thus, ensuring justice in the market”, highlighted the partner.
However, registration no. 906,413,966, which included products unrelated to chocolates and sweets, was maintained, as it did not make direct reference to the shape of the chocolates.
Market impact
This decision sets an important precedent in the regulation of trademarks in Brazil, especially in the chocolate sector. It highlights the importance of protecting only effectively distinctive signs. Companies in the sector and other segments should be aware of the implications and opportunities generated by this ruling.
“The decision is a crucial step towards ensuring a fairer and more competitive market. It is also essential that individuals are clear about the impossibility of appropriating generic terms that belong to the public domain,” concludes the lawyer.
Kopenhagen is represented in the proceedings by the law firm Dannemann Siemsen, while AllShow Empreendimentos, owner of Cacau Show, is represented by Daniel Advogados. The decision may still be appealed by both parties and interested third parties.
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