by Filipe Fonteles Cabral e Natalia Barzilai
December 01, 2017
In an emblematic decision, the 1st Panel of the Federal Appellate Court for the 2nd Circuit applies the rational of the secondary meaning to grant registration to the mark “POMODORO”.
It all started in 1984, when the Companhia Industrial de Conservas Alimenticias (CICA) launched a tomato pulp on the Brazilian market under the trademark “POMODORO”. The product soon became a sales leader in its category and, a few years later, the trademark was acquired by the multinational Cargill.
The “POMODORO” trademark was filed for registration at the Brazilian Patent and Trademark Office (BPTO) in the year of 2001, as a word mark, covering products in classes 29 and 30, including “tomato pulp” and “tomato sauce” (trademark applications nº 823198219 and nº 823198227). In 2008, the BPTO rejected those applications on the ground that the word “pomodoro” (“tomato” in Italian) is descriptive and cannot be registered as a trademark. Said decision was subsequently maintained in administrative appeal level.
It is worth to mention that the BPTO examination considered only the trademark and produts claimed, ignoring all documents submitted by the applicant. It means that the BPTO did not take into account the large investments made for the promotion of the trademark in the national market, over three decades, which resulted in a considerable goodwill valued in approximately USD 180 million. The examiners of the BPTO also disregarded the market survey that indicated a high degree of recognition of “POMODORO” as a trademark by the Brazilian population in general (58%).
Thereafter, a lawsuit was filed at Federal Courts to reverse the INPI’s decision. The circuit judge did not accept the claims arguing that the secondary meaning thesis could not be used for the appropriation of a generic term, that is, a word which primary meaning denotes the very product identified by the mark.
In appeal level, the Plaintiff challenged the arguments of the first instance decision based on the market survey. In addition to pointing out a high degree of spontaneous association of the “POMODORO” mark with the Plaintiff’s product (58%), the survey also revealed that only a tiny fraction of the Brazilian population (1%) knows the meaning of the Italian word “pomodoro”. How can the BPTO classify a word as “descriptive” if 99% of the population does not know its meaning? The incongruity between the treatment given to the mark by the BPTO and the reality to the consumer market was evident.
At the judgement session of the appeal, Federal Justice Abel Gomes, reporter of the appeal, voted for the dismissal of the lawsuit reaffirming the understanding that the word is descriptive.
Inaugurating the divergence, the Federal Justice Paulo Espírito Santo voted for the acceptance of the appeal. In an emphatic manifestation, the Judge stated that the granting of registration for the “POMODORO” mark was a matter of Justice, being a notorious and incontrovertible fact that the mark is widely known in Brazil and that registrations were given to other marks in similar situation such as “LIGHT”, “SUPER BONDER” and “AMERICAN AIRLINES” (among other examples brought by the Plaintiff in memorials).
The third voting magistrate, Federal Justice Ivan Athié stated that the judge should be sensitive to the facts of life and that consumers do not see “POMODORO” as “tomato”, but as the product of the Plaintiff, so he followed the dissenting vote in favor of the appeal. After the trial was adjourned so that two judges of the 2nd Panel were summoned to participate in the decision, in the form of procedural law, the Federal Justices Messod Azulay and Simone Schreiber supported the divergent understanding, forming a majority of 4×1 in favor of the Plaintiff.
The reasoning of the final decision from the Federal Appellate Court was summarized as follows:
“Article 124, VI, of Law 9.279/96 prohibits the registration of a generic or common use term, related to the product or service that it intends to distinguish, aiming to prevent the monopoly on generic denominations and to avoid an unfair competition practice.
However, in this case, it is a weak mark which, although it cannot be appropriated exclusively, because of its meaning, it is perceived by the consumer as a mark and not as a generic term – tomato – thereby fulfilling its role of distinguishing the product offered, vis-à-vis the other competing goods, safeguarding the interests of both the applicant and the consumers.” (AC 2014.51.01.00651-1, TRF2, 1st Panel, Fed. Justice Abel Gomes (Reporter), by majority, with conducting vote of Des. Espírito Santo, DJe 21.08.2017)
The above ruling from the Federal Appellate Court sets an important precedent in favor of marks which acquire distinctiveness through use (the so-called “secondary meaning”).
For marks which the word element comes from a foreign language, a new door is open to obtain registration at the BPTO, since consumer perception, evidenced by a market survey, should overcome the primary meaning of the word in foreign vocabulary.
With this judgment, the Federal Appellate Court for the 2nd Circuit shows a good sensibility to interpret the Law and grant protection of industrial property in accordance with the reality of the market, despite the excess of formalism applied by BPTO.