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CHINA IN BOX: Brazilian courts recognize secondary meaningOriginally published in ABA Section of Intellectual Property Law – International
Action Group: International IP Update
A recent decision rendered by the Brazilian courts recognized the secondary meaning doctrine, which has been a controversial topic in the country. The company RHS Franchising Ltda., owner of many registrations in Brazil on the trademark CHINA IN BOX (both as a word mark and in a composite form) filed a court action against the Brazilian PTO and Karen Regina Alcon ME, requesting cancellation of Registration No. 825692257 on the composite mark ASIA IN BOX, as reproduced below: Both the plaintiff’s mark and the defendant’s mark cover services in the same market segment, which are mainly food and restaurant services. The trial judge decided the court action in favor of the plaintiff and declared the cancellation of the registration on the trademark ASIA IN BOX (composite). An appeal was filed by the defendant. The Federal Court of Appeals in Rio de Janeiro reversed the decision rendered by the trial judge, thus deciding the appeal on the defendant’s favor and stating that the marks should be allowed to coexist in the market because they are sufficiently distinct and that the term IN BOX is of common use to designate products that are delivered “in a box”. The decision rendered by the Panel of Judges of the Federal Court of Appeals, however, was not unanimous, which enabled the plaintiff to lodge another appeal at the same Court of Appeals. The plaintiff argued basically that the trademarks are confusingly similar, that its trademark has been in use since 1992 and requested that the defendant’s registration on the trademark ASIA IN BOX (composite) be cancelled. The second appeal (filed by the plaintiff) was decided on its favor and the most interesting point raised by the judges of the Panel of Judges of the Federal Court of Appeals was the recognition of the secondary meaning doctrine by the Brazilian courts. Because this doctrine has not yet been officially adopted by the Brazilian PTO, the decision rendered by the Federal Court of Appeals in Rio de Janeiro on this matter is important because it shows that Brazilian courts are already recognizing and applying the doctrine. It should be noted, however, that this still is a controversial issue in Brazil and court decisions have also been rendered on the other way round, in which the secondary meaning doctrine has not been recognized or applied. The abovementioned decision, which was rendered on favor of the owner of the senior-registered trademark CHINA IN BOX, was based on four major grounds, namely: - That the plaintiff’s mark CHINA IN BOX has acquired secondary meaning and that it is directly associated with the service of Chinese food served in a box, which was firstly created by the plaintiff. - That the adoption of the expression IN BOX by the defendant in its mark ASIA IN BOX indicates the intention of benefiting from the fame of the plaintiff’s mark CHINA IN BOX. - That if the trademarks ASIA IN BOX and CHINA IN BOX were allowed to coexist in the same market segment, there would be a reduction of the distinctiveness of the mark CHINA IN BOX and the defendant would take advantage of the concept of “Chinese food served in a box” created by the plaintiff. - That the similarity between the trademarks ASIA IN BOX and CHINA IN BOX would cause consumer confusion, as consumers might assume that ASIA IN BOX is a variation of CHINA IN BOX. As a consequence of this decision, the registration on the mark ASIA IN BOX (composite) was cancelled mainly due the recognition of the secondary meaning. Appeals can still be filed before the Superior Tribunal of Justice and the Brazilian Supreme Court. There have been discussions in Brazil regarding the recognition and appliance of the secondary meaning doctrine. It is undeniable that certain marks, although formed by expressions which can be considered descriptive forming weak marks, have indeed acquired secondary meaning and thus, there is a tendency to adopt this concept on a more regular basis. In spite of this, the Brazilian PTO has not yet formally expressed its position regarding the secondary meaning doctrine in its Trademark Examination Guidelines. Originally published in ABA Section of Intellectual Property Law – International Action Group: International IP Update |
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