According to a recent STJ decision, low distinctive brands must be required to coexist with similar.

The 4th Panel of the Superior Court of Justice has ratified the opinion that marks with little differentiation power, composed of widely used, evocative, descriptive or suggestive elements, may be required to coexist with similar ones.

Thus, the collegiate endorsed the sentence of the Federal Regional Court of the 2nd Region (TRF-2), who thought that the name "Rose & Bleu" has no reasonable distinction to be registered as a mark by the Institute National Industrial Property (INPI).

Minister Raul Araújo - the rapporteur - clarified that, according to items VI and VIII of article 124 of the Industrial Property Law, the generic terms that are used in a common and usual manner to designate products or services within the industry in question (as well as colors and its designations), cannot be recorded as brands, except if combined in a unique and distinctive way.

In 2005, a children's clothing company asked INPI to register the "Rose & Bleu" brand to ensure the exclusive use of the name in the country. Inpi granted the registration, but with the restriction of not having the right to the exclusive use of the nominative elements.

In view of this, the company filed a lawsuit aimed at annulment of the decision taken by the INPI and to ensure the exclusive use of the brand, without any caveats.

Once the request was rejected in two instances, the organization resorted to the STJ claiming the full protection of the "Rose & Bleu" brand for exclusive use in Brazil.

According to the rapporteur, the company cannot have the exclusive use of the expression "Rose & Bleu". This is because pink and blue colors are strongly associated with children's, female and male clothing (traditionally) and, although they do not describe the essential elements - nor make direct reference to the children's clothing sector - they have a "connotative bond between the brand and the activity designated ".

In addition, the magistrate adds that the expression, as provided for, consisting of two abstractly unregited elements, does not achieve the necessary distinction to gain the intended protection.

When denying the organization's feature, the rapporteur pointed out that the "Rose & Bleu" brand is made up of common use, with low distinctive power and, therefore, "must live with similar ones" .