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In a dispute over the validity of the DELINIA trademark, the 3rd Panel of the Brazilian Superior Court of Justice upheld a lower court's decision, declaring the trademark registration null. The trademark was owned by Groupe Adeo and used to identify Leroy Merlin's line of built-in furniture. Reporting Justice Nancy Andrighi noted in her ruling that the DELINIA trademark, registered in 2010 and used by Leroy Merlin, bore a strong graphic and phonetic resemblance to the earlier D'LINEA trademark, which belongs to the Rio Grande do Sul company D'LINEA INDÚSTRIA E COMÉRCIO DE MÓVEIS LTDA.
The legal dispute began in 2014 when D'LINEA filed a lawsuit seeking to cancel Leroy Merlin's trademark registration and prevent its use, claiming it was an imitation of their earlier trademark. The Brazilian Patent and Trademark Office (BRPTO) supported the nullification, arguing that the similarity between the two trademarks could confuse consumers regarding the origin of the services.
The lower court ruled in favor of D'LINEA, declaring Leroy Merlin's trademark registration null. The justification was the graphic and phonetic similarities, as well as the potential for improper association between the two companies in the marketplace, given that both trademarks were used in the furniture sector. The court also prohibited Leroy Merlin from using the DELINIA name for products related to the furniture industry, with a daily fine imposed for non-compliance.
However, Leroy Merlin disagreed with the ruling and appealed to the Federal Regional Court of the 2nd Region (TRF2), which overturned the decision considering that the expressions were commonly used within the market sector, and therefore, the trademark registration should be upheld. The TRF2 's ruling emphasized that the trademarks consisted of terms that, in Italian, meant “of the line,” which closely relates to products in the furniture and interior design industry This would make registering the trademark impossible, given that, under the Brazilian IP Statute, the registration of common or generic expressions, particularly those directly related to the goods or services they identify, is prohibited.
In response to this decision, D'LINEA appealed to the Superior Court of Justice (STJ), seeking to have the trademark declared null. As a result, the 3rd Panel of the STJ did not uphold TRF2's interpretation during its ruling of Special Appeal #2120527. In her vote, reporting Justice Nancy Andrighi argued that the D'LINEA trademark could not be considered a common or generic expression, as it is not typically used to identify this type of product, nor is it a widely recognized term in this industry.
The justice also noted that the BRPTO had itself supported the nullification of the DELINIA trademark due to the significant similarities that they bear. She further referenced a precedent set by the 3rd Panel in the case of Special Appeal #954,27, which established that the mere possibility of confusion is enough to warrant trademark protection, without the need to prove actual customer or consumer deception.
Based on the rapporteur's reasoning, it can be seen that the STJ’s decision adhered to the principles of prior use, originality, and trademark specialty. According to the Brazilian IP Statute, trademark registration is granted exclusively to the first claimant, and reproductions or imitations of trademarks that aim to identify products or services within the same market sector and could potentially confuse consumers about their origin are not permitted.
As the minister correctly pointed out, the purpose of trademark registration is twofold: “to protect the owner from usurpation, parasitic economic gain, and customer diversion, and to prevent consumer confusion regarding the origin of products or services.” Given that the later trademark DELINIA lacks originality compared to the already registered D'LINEA and both are used for furniture and related items, in light of applicable precedents, the DELINIA trademark infringes on the rights of the earlier registered trademark, undermining fair competition in the market.
Although Leroy Merlin is prohibited from using the DELINIA name for furniture and related products, the company is allowed to continue using it for other types of goods. This is because Leroy Merlin also holds registrations with the BRPTO for DELINIA in classes 07, 08, 11, and 21, covering various items such as kitchenware and lighting, which were not involved in this legal dispute.
