Federal Court of Appeals recognises secondary meaning doctrine

In a dispute between Unilever NV and Laboratorio Cuenca SA over the trademark SUAVE (meaning 'smooth' or 'soft'), the Federal Court of Appeals, applying the secondary meaning doctrine, has reversed, in part, a decision of the first instance court.
Defendant Cuenca used the trademark ISSUE, accompanied by the words 'Shampoo Suave', on its products. Unilever filed suit, alleging that:
  • it had used the trademark SUAVE intensively on shampoos and conditioners since 1999; and
  • it had filed two trademark applications for the registration of SUAVE that were still pending. 
Once the complaint had been served (Court File 1135/05), Cuenca filed a counterclaim for annulment of the applications for the registration of the SUAVE mark.  
The first instance court considered that SUAVE was not distinctive, dismissed the complaint and allowed the counterclaim, declaring that the trademark applications filed by Unilever were null and void. 
On July 1 2010 the Federal Court of Appeals revoked this decision in part. Although it recognised that SUAVE was a weak mark, the court found that, due to the intensive use of SUAVE by Unilever since 1999, the registration of the mark should be allowed based on the doctrine of secondary meaning.
The court further held that the adjective 'suave' is not necessarily descriptive of shampoos and conditioners, but merely indicates a quality of the hair treated with the product, according to the definition of that word in the Real Academia Española dictionary (ie, 'smooth' or 'soft').
The court considered that, given the recognition of the trademark SUAVE among consumers of shampoos and conditioners (who do not perceive the mark as an adjective qualifying the product), the mark had acquired distinctive character through intensive use. Consequently, the court rejected Cuenca's claim for annulment of Unilever's applications.
With regard to Unilever's claim, the court stated that, because SUAVE is a weak mark, the company should accept that third parties will use it in conjunction with their own marks, provided that such combinations do not mislead consumers. Based on the foregoing, the court upheld the decision of the lower court with respect to Unilever's claim.
Fernando Noetinger, Noetinger & Armando, Buenos Aires

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