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In recent weeks, the news about the loss of exclusivity of the “Língua de Gato” trademark has caused a great deal of buzz and raised many questions among chocolate lovers. After all, did Kopenhagen lose its rights to the “Língua de Gato” trademark?

Allshow Empreendimentos e Participações Ltda, one of Cacau Show’s controlling companies, filed a lawsuit to challenge the validity of the trademark granted by the BRPTO to Nibs Paticipações Ltda., of the Kopenhagen group, for the nominative trademark “Língua de Gato”, under processes #906413966 and #906413478, granted in 2016, which identify chocolates and related food products.

In the lawsuit, Allshow claimed that the term “Língua de Gato” [which translates to cat’s tongue] is a literal translation of the German term “Katzenzungen” and was originally used in 1892 by the Austrian chocolate company Küfferle, now owned by Lindt & Sprüngli. According to Allshow, the term “cat’s tongue” is used around the world to refer to chocolates sold in a shape resembling a cat’s tongue.

To support this claim, the company demonstrated that several national and international manufacturers have cat’s tongue chocolates in their portfolios, and use this expression in different languages to describe the shape of the chocolates being sold.

Thus, in 2018, aiming to explore this product category, Cacau Show announced plans to launch a product named “Panettone Miau,” described as a “classic panettone with milk chocolate in the shape of a cat’s tongue.” Kopenhagen interpreted the company’s market strategy as an attempt to parasitically exploit its brand, leading Allshow to seek the annulment of its competitor's trademark registrations through legal action.

Allshow argued that the rights to the term “Língua de Gato” should not be granted exclusively to a single holder, as it identifies a chocolate sold in a specific shape, which is a common practice in the chocolate industry. The company also reported that the competitor was using its nominative trademark registrations for “Língua de Gato” to challenge any competitor who used the term descriptively in their products, thereby creating an undue monopoly.

In its defense, Nibs claimed that it has been selling its traditional line of “Língua de Gato” chocolates in Brazil since 1940, emphasizing that the term is not commonly used in Brazil and that its generic nature in other countries does not apply within the national territory. The company argued that the competitors’ exploitation of the expression indicates a parasitic intent, as they would be seeking to associate their products with Kopenhagen chocolates.

As a way of refuting the competitor’s allegations, Nibs argued that if the plaintiff’s logic were coherent and the “Língua de Gato” brand was merely descriptive of the shape of the products and commonly used in the national market, the expressions Garoto’s “Batom” [lipstick] or Lacta’s “Diamante Negro” [black diamond] could also be freely used by any competitors, as long as they identified chocolates in shaped like lipstick or black diamonds.

After analyzing the case, on July 1st, Judge Lauda Bastos Carvalho of the 12th Federal Court of Rio de Janeiro issued her ruling, stating that “it was proven that the expression ‘língua de gato’ is commonly used to designate chocolates in an oblong and flat shape”.

According to the judge, the scenario of use of the expression “Língua de Gato” by competitors does not characterize parasitic exploitation, given that the expression is directly related to the shape of the products and is not used as a trademark element.

To support her understanding, the judge reinforced that “it was proven that, before 2016, in addition to the defendant’s own economic group, at least five other competitors used the term ‘cat’s tongue’ to describe their chocolate products in an oblong and flat shape, including one of the largest retailers in Brazil” ¹.

Therefore, considering that the time the registrations in question were granted, the term was already used by at least five other competing companies to describe chocolates and related products, the judge considered that the expression was already in common use in the chocolate segment years before the examination of the applications for registration of Kopenhagen’s nominal trademarks in 2016.

The judge also acknowledged that Nibs has been using the nominative registration to protest against the use of the expression “Língua de Gato” by other companies in the same sector as a descriptive element – a practice that she deemed anti-competitive.

In Brazil, under the Brazilian IP Statute, the registration owner is guaranteed the right to exclusive use of their brand within the national territory, as well as the right to protest against third parties. The Statute also outlines circumstances under which registration may be prohibited, including the registration of signs of a generic and common nature in relation to the product or service they intend to distinguish.

The Brazilian Patent and Trademark Office — BRPTO is the authority responsible for analyzing the distinctiveness of a trademark and for granting the right of exclusive use to the owner, assuming that the Agency is capable of distinguishing the marked product from those of competitors. However, there may be instances in which the Examiner is unable to identify the possible common use of an expression, leading to the undue granting of a trademark registration application. Conversely, a trademark may be erroneously deemed as generic, necessary or common when it is indeed distinctive. In these cases, the nullity action is an effective means for discussing matters in which the owner or interested third parties understand that some type of failure occurred in the decision at the administrative level.

From this perspective, the judgment concluded that one of the registrations of the nominative trademark “Língua de Gato”, #906413478, which guaranteed Kopenhagen the exclusivity of the term for chocolates and related products, was null and void. On the other hand, registration #906413966 was upheld for the same nominative expression, as it indicates products not related to chocolates and sweets, with the expression being distinctive for the food items covered by this registration.

As a result of this legal outcome, in principle, Kopenhagen lost its exclusivity over the expression “Língua de Gato”, in isolation, for its chocolate products in this characteristic shape, and must resign itself to coexisting with competing companies freely using the term in a descriptive manner in their goods.

At this point, it is important to emphasize that Nibs still holds other trademark registrations that contain the term “Língua de Gato” accompanied by other nominative elements and/or a distinctive visual set (such as a logo).

Despite the conclusion of the lawsuit in the trial court, the dispute over the matter does not seem to be fully resolved. In a statement, Kopenhagen reported that, until the entire process is concluded, it maintains its exclusive right to the expression in dispute, preserving the right to fight in court for the recent decision to be overturned.