According to a recent decision rendered by the 11th Panel of the Brazilian Federal Regional Court of the 3rd Region, the term “botox” is not indicative of the botulinum toxin. Therefore, it can be registered as a trademark.
In the case at hand, a pharmaceutical company filed a lawsuit claiming the invalidity of the registration of the trademark “botox”, granted by the Brazilian PTO, to a company of the same branch, since it is their understanding that this term refers to the chemical element used in neurological and aesthetic treatments and does not have sufficient distinctiveness.
The reporter Federal Judge Mr. Nino Toldo understood that the term “botox” does not designate the substance itself which is its main component. Therefore, he concluded that there would be no reason to prohibit the registration as a trademark.
In addition, the expert reports attested that the nomenclature does not reflect the botulinum toxin, but rather the product developed by the brand holder. Thus, the experts understood that the public repercussion of the name as synonymous with the chemical component stems from its notoriety and advertising.
Based on that, the collegiate concluded that there is no invalidity in the administrative act of the Brazilian PTO and dismissed the plaintiff’s appeal, upholding the decision rendered by the Lower Federal Court of the State of São Paulo, which did not invalidate the registration of the trademark.
Lawsuit No. 0000616-76.2006.4.03.6100/SP
More information is available, in Portuguese, in: https://www.portalintelectual.com.br/trf3-rejeita-pedido-de-anulacao-do-registro-da-marca-botox/