Monday, 29 November 2010

SUAVE has secondary meaning, but not very much of it, says Argentine Court

A keenly contested trade mark dispute between Unilever NV and Laboratorio Cuenca SA has been the subject of a ruling by Argentina's Federal Court of Appeals.  In short, Unilever was the owner of the SUAVE trade mark, which it had used extensively on shampoos and conditioners since 1999 and for which it had two pending applications for registration.  Cuenca used the trade mark ISSUE -- quite different, but accompanied by the words 'Shampoo Suave', on its products. Unilever sued for infringement, while Cuenca filed a counterclaim for annulment of Unilever's applications.

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.

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