Wednesday, 2 May 2012

Literally: ‘Zero’ registration for Coca-Cola

A Regional court in Brazil ruled that the word mark ‘zero’ is merely descriptive and as such, no protected. The 6ª Câmara de Direito Privado do Tribunal de Justiça de São Paulo heard a case brought by the International well known mark Coca-Cola against its largest competitor, AMBEV (maker of Pepsi) for the use of the word ‘zero’. According to the Court the word is widely used not only by Coca-Cola’s direct competitor but also by several manufacturers of beverages, especially soft drinks - among other food products - to indicate that the product does not have added sugar.

Coca-Cola claimed that it was the first company to register the trade mark at the Brazilian National Institute of Industrial Property (INPI) back in 2004. It further argued that the mark is not merely descriptive, since it has no meaning. Among the arguments, it claimed Ordinance 27/1998 of the Ministry of Health which handles sign that are not registrable as trade mark – in this case it does not allow the use of the word zero in conjunction with other words, such as sugar. This is so, because the intention of the words is to inform consumers about the composition of the products. Furthermore, the company claimed that the use of the mark ‘zero’ by AMBEV  is taking advantage and used unfairly (i.e. unfair competition law) and noted that the use will confuse consumers. However this latter argument was dismissed by the rapporteur of the case, Francisco Loureiro, explaining that the word zero does not produce confusion among the consumers since the package of Coca-Cola and AMBEV are quite different – adding that both products are well consolidated and differentiated in the market. In other words, it is saying that the most distinctive a mark is, the less it would lead to cause confusion.

Mr Loureiro pointed out that the existence of an administrative act of the Ministry of Health authorizing the use of the word "zero" to indicate foods and beverages that have no substance highlights the thesis that the term is merely descriptive and therefore is not eligible for registration as a trade mark. This is indeed corroborated by Ordinance 27/1998 of the Health Surveillance Secretariat of the Ministry of Health, which regulates the nutritional information regarding supplements in the food industry – it provides in article 4.1.6 that the terms "free", "livre", "sem", "zero", "não contém" e "isento" can be widely used as to complete with the requirements in the Regulation for food—used for the labeling "does not contain".

Mr Loureiro also took into consideration the Intellectual Property Law (Law 9.279/1996) to elucidate the case. He refers specifically to Art 124, VI noting that generic, necessary, common, ordinary, or simply descriptive signs when related to the good and/or service to be distinguished OR those signs commonly used to designate a characteristic of the good and/or service regarding its nature, origin, weight, value, quality and time of production or service provision are bar from registration. In other words, a sign must make it possible to distinguishing the good/services by their business origin, and NOT by their quality or intended purpose. However, he mentioned that it is possible to register such signs if the sign has acquired distinctiveness through use, i.e. secondary meaning.

While I could not find the court’s decision (the link appears to be broken – check the source later on just in case – here) I believe the case is straightforward. Yet there are many things which we can speculate. 1.- Have Coca-Cola registered the name ‘zero’ alone? If so, then I believe that the next action will be the invalidation of the mark. 2.- If the mark zero is a combination i.e. Coca-Cola zero, then the use of the word ‘zero’ alone does not deter other business for using it, specially if the word is not distinctive enough. 3.- Is the word ‘zero’ used by Ambet identical to the one used by Coca-cola? There is the need of a global appreciation test, not just an aural assessment. For instance, are they written in the same font, or colour, or style, or is the word in combination with other words or logo? If so, the marks are not identical but similar. 4.- It is understood that Coca-Cola is using the word ‘zero’ as describing that the drink does not contain sugar and this idea just put into my mind: is Ambet using the word also as to identify beverages that are free of sugar? What about if the use of the mark is to identify drinks that are for consumers of free will or free spirit, or open minded? In this case the word zero will be distinctive for Ambet’s products and still not distinctive for Coca-Cola – an awkward moment since the sentence could backfire Coca-Cola’s intention i.e. invalidating Coca-Cola mark and opening the doors to Ambet for the protection of the same word – some will call it an unfortunate event.

PS. While posting this, I did have a last intent re. the registration of the mark zero by AMBET and I found Nº do Processo: 903847701 which has been recently published by the Office: it is a combination containing a logo and the word zero written in a very distinctive way.
Also I noticed by using Google images that AMBET uses the word zero in one of its products: 'Antarctica sub zero' for beers and thus sugesting a cold beer -- yet nothing to do with 'zero sugar'

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