The 4th Panel of the Superior Court of Justice (“STJ”) understood that evocative or suggestive marks can coexist with similar ones. When reforming the decision of the Federal High Court of the 2nd Region (“TRF-2”) that had determined the cancellation of the Nebacimed mark, the panel concluded that the coexistence of both marks – which refer to the active principle of the formula – would not be able to confuse consumers1.
According to TRF-2, the Nebacimed mark would be a partial reproduction of the name of the drug Nebacetin, violating the protection provided in Article 124, item XIX, of the Industrial Property Law, in addition to the possibility of confusion among consumers, since both have the same purpose.
In the judgment of the Special Appeal, the Reporter Justice Antonio Carlos Ferreira, highlighted that the Nebacetin and Nebacimed medicines use in their names the combination of syllables of their active principles (neomycin sulfate and zinc bacitracin). In that way, he emphasized that both marks are suggestive of the pharmacological composition, which characterizes them as weak marks, reason why it would not be possible to get exclusive protection over the combination of the syllables of their active ingredients.
Despite the similarity in the initial part of the marks, the Reporter Justice pointed out that there are sufficient graphic and phonetic differences, due to the suffixes “cetin” and “cimed” and, the term “cimed” makes reference to the name of the laboratory Cimed. Lastly, the Reporter Justice stressed that the Brazilian Patent and Trademark Office (“INPI”) presented a technical opinion about the possibility of maintaining the registration of both trademarks.
The Special Appeal was granted by an unanimous decision, dismissing the requests for the nullity of trademark registration, with the respective maintenance of the Nebacimed trademark.
1 Special Appeal 1.848.654
More information available in Portuguese at: https://www.conjur.com.br/2021-mai-21/pedido-nulidade-registro-marca-nebacimed-improcedente