Superior court of justice denied protection to unilever´s mark EBONY

By Rodrigo Borges Carneiro

In a recent decision published on March 30, 2011 the Superior Court of Justice (Special Appeal 1.166.498) has considered that EBONY is a weak trademark for deodorants aimed to Afro-descendants and can peacefully coexist with the mark EBANO & MARFIM (EBONY & IVORY in English) for a line of makeup products.

The reporting judge Minister Nancy Andrigui considered that EBONY is an expression commonly related to Afro-descendants and agreed with the Federal court of Appeals which had already decided that it was not possible to give exclusivity to the use of words such as "white", "black", "yellow", "brown" or "mulato" and that the PTO could not therefore use the registration of a mark with one of these terms to deny registration to another.

The decision contains strong words and even considers that the coexistence of the marks is not only possible but inevitable as "the judiciary can not recognize to a business enterprise the marketing indication of a whole economic sector - in fact, previously marketed by disregard and discredit – and allow a monopoly, now a that black middle class is emerging in Brazil. The initiative to obtain monopoly of a mark that identifies half of the consuming public in Brazil is an abuse of intellectual property rights and an attitude of pure opportunism”.

Further it equated the situation to a patent misuse scenario which the Courts have a duty to curb or the abuse of the intellectual property rights will generate negative effects on the competition which can be forced to cease its lawful activities in a certain market segment.

With all due respect, I feel that the decision mixed the concepts of evocative and generic marks and that EBONY should deserve protection.

Also the strong position on abuse of intellectual property was not warranted by the facts of the case.

After all EBONY has no direct meaning regarding to deodorants and only an indirect meaning to the market segment and can not be equated with black or white.

The decision also troubles me in view of a passage which denies the possibility of weak or evocative marks acquiring secondary meaning.

The case can still be appealed to the Supreme Court of Justice based on Constitutional issues.