Trademark registration that presents ideological imitation must be annulled, even if composed of common or evocative terms

In May, the Brazilian Superior Court of Justice, Brazil’s highest court for non-constitutional matters  (“STJ”), ruled that trademarks that are liable to create confusion to the consumer cannot coexist in the same market segment, even if they are evocative or composed of common terms.

The controversy was originated after the Brazilian Patent and Trademark Office (“INPI”) allowed the coexistence of the trademarks “Megafral” and “Bigfral” to designate disposable diapers. The owner of the prior trademark registration, “Bigfral”, claimed that the replacement of the prefix “Big” with “Mega” was not sufficient to cease the confusion between the trademarks, so that they should not coexist in the same market segment.

In the original suit, the judge ruled in favor of the plaintiff, deciding for the nullity of the act of the INPI that granted the registration of the trademark “Megafral”. However, the trial court reversed the judgment of the lower court by arguing that the trademark “Megafral” was evocative and composed of common terms.

The owner of the trademark “Bigfral” then filed a special appeal to STJ, which decided for the nullity of the act of the INPI that granted the registration of the trademark “Megafral”.

According to the reporting judge, the similarity of the trademark was undeniable and since both trademarks convey the idea of a large diaper, there was a real possibility of confusion by the consumers, regardless of whether the trademarks are considered to be evocative or composed of common terms.

The judge stressed that the  Industrial Property Law (Law 9,279 of May 14, 1996) allows the registration of evocative trademarks (trademarks that relate to the designated product or service) since they are enough distinctive. Thus, once that the trademark “Bigfral” was granted with exclusive rights, being sufficiently distinctive, it would not be possible its coexistence with the trademark “Megrafral”.

The reporting judge finally pointed out that is not necessary to prove that the consumers were indeed confused by the trademarks in order to be possible to protect the prior registration.

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