The mere similarity between the names of two products that are not related does not preclude the registration of a mark. This was the understanding of the Fourth Panel of the Brazilian Superior Court of Justice when judging the appeal filed by Nestlé S/A against the decision of the Brazilian National Institute of Industrial Property (“INPI”) to cancel the registration of the mark “Moça Fiesta” to designate condensed milk, based on the existence of the mark cider Fiesta. The decision in favor of Nestlé was unanimous, following the opinion of the reporting Justice, Fernando Gonçalves.

In its opinion, Justice Fernando Gonçalves recognized that the registration of a mark is intended to prevent consumer confusion between similar products, so it does cover products with no correlation. He highlighted that the difference would begiin by the very location of the relevant goods in the markets, one being in the section of beverages and the other in the section of sweets. The presentation of the two products was also totally different, one in a dark bottle and the other in a tinplate can. Finally, the labels were also different both in color pattern as well as in the images used. Justice Fernando Gonçalves also indicated that there are many precedents in the Superior Court of Justice on the same issues. With this line of reasoning, he accepted the request of Nestlé and restablished “Moça Fiesta” trademark registration.

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Source: STJ

 

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