Monday, 29 November 2010
According to the trial court, the word SUAVE -- meaning "smooth" or "soft" -- was not distinctive. The court dismissed the complaint and allowed Cuenca's counterclaim. The Federal Court of Appeals disagreed. While SUAVE was a weak mark, due to the scale of use which Unilever made of it since 1999, its registration of the mark should be allowed since the word had acquired secondary meaning. In the court's view, the adjective 'suave' was not necessarily descriptive of shampoos and conditioners, but merely indicated a quality of the hair treated with the product. However, Unilever's infringement claim still failed. Because SUAVE was a weak mark, Unilever had to accept that third parties would use it in conjunction with their own marks, provided that they did not mislead consumers.
Source: "Federal Court of Appeals recognises secondary meaning doctrine", note by Fernando Noetinger (Noetinger & Armando, Buenos Aires) for World Trademark Review.