Kopenhagen, a renowned Brazilian chocolatier with a history dating back to 1928, is known for its tasting chocolate products. One of its most iconic products is the "Língua de Gato" (or "Cat Tongue" in English) chocolate, which features a cat-tongue shape. Due to the success of this almost 80-year-old brand, many competitors have attempted to market chocolates with the same shape and name, "Língua de Gato." The trade mark owner has consistently taken legal action against these competitors to defend its trade marks. However, one competitor challenged the "Língua de Gato" word marks before court, arguing that it has become generic and can no longer be exclusively used by the company that initially registered it.
On July 3, the 12th Federal Court in Rio de Janeiro partially annulled one of the trade mark registrations for "Língua de Gato", recognizing it as a commonly used descriptive term for chocolate products.
As a background to the case, it's essential to know that Kopenhagen has owned trade marks that combine the expression "Língua de Gato" and figurative elements for decades. The current legal dispute revolves around a "Língua de Gato" word mark registered in 2016.
The plaintiff sought the annulment of trade mark registrations for the term "Língua de Gato" in classes 30 and 32 from the National Institute of Industrial Property (INPI), arguing that the expression is descriptive and commonly used to identify chocolates shaped like a cat's tongue. They contended that the expression, initially introduced in German as "Katzenzungen" in 1892 by the Austrian chocolatier Küfferle (now part of Lindt & Sprüngli), has since become generic across multiple languages — including "Cat Tongue" or "Langue de Chat" — and is similarly used by various brands in Brazil under its Portuguese translation. The legal action was initiated as a strategic defence against a trade mark infringement claim filed by the trade mark owner.
The court determined that "Língua de Gato" is a descriptive term frequently used in the chocolate industry to refer to chocolates shaped like a cat's tongue. Under Brazilian law (Article 124, VI of the LPI), such generic terms cannot be used as trademarks.
In its judgment, the court stressed the importance of establishing whether the term "Língua de Gato" was commonly used to describe chocolates at the time of the trade mark's registration on February 2, 2016.
The court further noted:
"While it is undisputed that other companies have been using the terms KATZENZUNGEN, CAT TONGUE, LANGUE DE CHAT for many decades in other jurisdictions, it is the Brazilian context and the usage of the expression LÍNGUA DE GATO that must be examined to resolve this dispute. Nevertheless, this fact is not insignificant, as it indicates that the contested trade mark, at its core, is not arbitrary but rather a translation of widely used expressions abroad."
The court referenced a dictionary definition linking "Língua de Gato" to chocolates to support the claim that the term is generic. Additionally, it cited instances where competitors had used the term before 2016, establishing that "Língua de Gato" was commonly used in Brazil to describe chocolates of this specific shape. As part of its assessment, the court also considered a figurative trade mark filed by a third party in 2011 for "chocolates," which featured the expression "Língua de" accompanied by a cat illustration, further reinforcing the generic nature of the term.
Acknowledging that the shape and associated foreign names for cat-tongue-shaped chocolates have been widely used internationally since the 19th century, the court partially annulled the disputed trade mark registration in Class 30, which covers chocolates and related food products. The registration in Class 32, concerning beverages, was upheld as it did not relate to chocolate products.
The process by which a trade mark becomes generic is known as genericide. This phenomenon typically occurs when a brand achieves such widespread recognition that it becomes disconnected from the company that created it, leading consumers to use the brand name as a general term for the product itself.
The plaintiff contended that "Língua de Gato" had become generic for the widely recognized cat-tongue-shaped chocolate because it is simply a translation of terms used in other languages, such as "Katzenzungen," "Cat Tongue," or "Langue de Chat," which describe the same shape. However, the plaintiff and the judge have missed a key point: the dispute centers on the trade mark, not the chocolate shape itself. What matters is whether the term "Língua de Gato" had become generic among the relevant Brazilian public when associated with that shape.
Moreover, since most Brazilian consumers do not speak foreign languages, the fact that similar chocolates are sold abroad under names like "Katzenzungen," "Cat Tongue," or "Langue de Chat" has no bearing in verifying whether "Língua de Gato" is generic in Brazil. The average Brazilian consumer would not recognize or associate these foreign expressions with anything.
The judge's reliance on a dictionary entry as the primary and sole evidence of genericism is questionable. Dictionaries are written by lexicographers, professional linguists who may, due to their linguistic expertise, assign meanings to words that may not necessarily align with the understanding of the relevant public.
Furthermore, the Court failed to consider that the trade mark owner has consistently taken legal action against competitors to defend its trade marks. This is particularly important in the context of genericism because Brazilian jurisprudence recognizes that consistent legal action by the trade mark owner demonstrates active efforts to prevent the trade mark from becoming generic.
Additionally, a mere trade mark registration does not constitute proof of its use and cannot serve as such evidence.
As the topic of genericide and entries of trade marks in dictionaries is indeed complex, it is worth mentioning that specific regulations have been implemented in the European Union to tackle this issue. According to Directive (EU) 2015/2436, Article 12, if a dictionary, encyclopedia, or similar reference work, whether in print or electronic form, gives the impression that a trade mark is a generic name for the relevant goods or services, the publisher must take corrective action upon the trade mark owner's request. The publisher is required to clarify that the term is, in fact, a registered trade mark. This clarification must be made without delay, and in the case of printed works it must be included in the publication's next edition.
This dispute is likely to continue in the appellate Court. We will keep you informed of any further developments.
