The generic character of a mark must be assessed according to national usage and costumes and nothing prevents the registration of a foreign name to expression in its literal meaning is meaningless for the average Brazilian man. The decision was provided from the Fourth Panel of the Superior Court of Justice (STJ), while the trial of an action that ensured the company Mark Peerless SA the certificate of its designation at Brazilian PTO (INPI). The PTO refused to provide the record with the argument that the translation 'Marca Inigualável' was a generic term, belonging to the common use.
The law that rules the rights and obligations relating to the intellectual property (IP) is the Law 9279/96 and its Article 124 states that generic graphical representation or expression commonly used to denote gender, nationality, destination, weight, value and quality, can not be registered as a trademark. According to opinion of the Federal Court (TRF2), was evident that Mark Peerless trademark was a generic expression and in face of globalization, we would equaling the record in the PTO to a phone book, in which any expression in English could be recorded.
The Fourth Panel of STJ, however, noted that the mark has not referred to any particular product or even the generic may be invoked in the case. "The immediate reason for the existence of trade mark law is distinctiveness, so that we can not give the record when another person or the community already has the right to use", explained the reporting Judge, Minister Luis Felipe Solomon. The seal for the legal recognition of registration requires treatment in its original form, in English, and not in its literal translation. The distinctiveness in this case was recognized.
The reporting Judge explained that other solution would be given to cases when companies wish to register a trademark spelled in a foreign language but in ordinary usage in the country, as is the case of a usual expressions as “hot-dog”, “spa”, “jogging”, “flat”, among many others. The Judge noted that different solution would also be present in cases of names that would be related with expressions outrageous. The minister also cited precedents in which despite being a usual expression the trademark was successfully registered in the PTO. In Resp 237.954/RJ, it was established that the term “off-price” could be used in the context of the designation of a shopping center.