After nine years awaiting a decision at the second instance and 14 years after the lawsuit was filed, the 11th Panel of the Federal Regional Court of the 3rd Region decided that the term “Botox” is a trademark and is not to be confused with the substance botulinum toxin. The discussion took place in Civil Appeal 0000616-76.2006.4.03.6100 / SP and the decision was unanimous.
The lawsuit was filed by the appellant Cristália Produtos Químicos Farmacêuticos LTDA against Allergan Inc and the Brazilian Patent Office (BPTO).
Cristália claimed that the word “Botox” is indicative of the chemical substance botulinum toxin and therefore it would not be subject to registration. Therefore, the appellant requested the annulment of the trademark registration, owned by Allergan.
The lawsuit was filed in 2006. In a judgment rendered in the first instance, the 19th Federal Civil Court of São Paulo dismissed the lawsuit, but Cristália appealed to the second instance and continued arguing that the registration was in disagreement with the trademark legislation, since the name in question derives from a substance widely used in neurological and aesthetic treatments, and it does not serve to distinguish only the product manufactured by the defendant according to Article 124, VI and XVIII, of Law 9.279 / 96, the Brazilian Industrial Property Law.
However, according to judge Nino Toldo, rapporteur of the case at TRF3, the BPTO’s act of granting the registration of the trademark was “perfectly valid”. The magistrate concluded that the term “Botox” presents the three elements provided for in art. 122 of Law No. 9,279 / 96, necessary to obtain protection and registration as a trademark: Distinctiveness – because it differentiates the product from the company Allergan from those manufactured by other laboratories, such as Botulift (Laboratório Bergamo) and Prosigne (Laboratório Cristália), among others; visually perceptible signs – captured by sight and not by other senses; and no legal prohibition – considering the fences listed in art. 124 of the Industrial Property Law.
Still, the judge understood that the generic character pointed out by Cristália was not characterized in the specific case, because the term “Botox” represents an evocative and suggestive mark of its main component, the botulinum toxin.
“More specifically with regard to its generic character, it should be noted that the word ‘Botox’ is not used to describe the chemical substance itself, which is its main component, and there is no need to speak, therefore, of prohibiting its registration as a trademark. Such a word, by the way, is perfectly capable of individualizing a specific product, within its segment of operation ”, said the judge in his decision.
The vote of the rapporteur judge was followed by all magistrates who are members of the 11th Panel and, by unanimous decision, Cristália’s appeal was denied, the decision of the lower court being upheld.