Suave But Not Too Suave

On July, 7, 2010, Division 1 of the National Court of Appeals on Civil and Commercial Federal Matters rejected the lower court’s decision that had cancelled plaintiff’s applications Serial Nos. 2,389,803 and 2,387,999 “SUAVE” in International Class 3 (“Unilever NV et al v. Laboratorio Cuenca S.A.”).  The decision also rejected plaintiff’s claim that defendant stop using trademark “ISSUE SHAMPOO SUAVE”.
 
Unilever had sued Cuenca to enjoin the latter’s use of trademkark “ISSUE SHAMPOO SUAVE” and Cuenca had counterclaimed seeking to cancel Unilever’s applications for trademark “SUAVE”.  Both claims were rejected by the Court of Appeals.
 
The judge of first instance considered that the word “SUAVE” was of common use for cosmetic products and lacked distinctiveness.  However, the Court of Appeals reversed this decision and, to do so, it took into account that “SUAVE” was a de facto trademark, in use since 1999 in connection with shampoo and conditioners, with sales of 3,729 tons, only for that year.  The court also held that “SUAVE” was not the necessary name of a shampoo or any other product, but rather an adjective denoting a certain quality.
 
Notwithstanding the fact that it had ruled  “SUAVE” to be registrable as a trademark, the court went on to state that it was intrinsically weak, and that its owner had to tolerate the existence of other trademark combinations containing the same term “suave”.  This opinion would surface again in later decisions.
 
Finally the Court also rejected the complaint directed against Cuenca’s use of the trademark “ISSUE SHAMPOO SUAVE”, because of the strength of the work “ISSUE” and the mentioned weakness of word “SUAVE”.
 
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 Six months later, in “Conopco Inc. v. Colgate Palmolive Company”, decided on February 28, 2011, Division 2 ruled that “SUAVE NATURALS”, applied for by Conopco in Class 3, and “PALMOLIVE NATURALS” registered by Colgate in the same class, were not confusingly similar. 
 
Here the court held that the word “SUAVE” conferred sufficient phantasy to the combination “SUAVE NATURALS” vis-à-vis the opposer’s trademark.   The court also rejected Colgate’s request that Conopco’s registration No. 2,390,723 for “SUAVE NATURALS” be cancelled.
 
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Ten months later Division 1 revisited the trademark “SUAVE”.  On December 27, 2011, in “Conopco Inc. v. Colgate Palmolive Company”, it rejected the oppositions filed by Colgate against Conopco’s applications for the trademark “SUAVE” in Class 3.  Colgate’s opposition had been based on section 2, paragraph a), of the Argentine Trademark Law, which bars the registration of indicative or descriptive signs.
 
Here the Court ruled that “SUAVE” was a suggestive trademark without adjectival function, and did neither describe nor constitute the necessary name of the product. The plaintiff had registered the trademark “SUAVE” in 1960 in connection with “preparations for hair styling”. However, according to the Court, the most relevant fact was that Conopco had positioned de facto trademark “SUAVE” in the market.
 
It is interesting to note that the defendant argued that neither the theory of “secondary meaning” nor the creation of descriptive signs as trademarks (on the basis of its secondary meaning) were applicable to the case as this was not compatible with the Argentine attributive system (whereby trademark rights are acquired through registration, not through actual use).  The Court of Appeals held that the term “SUAVE” was suggestive and distinctive.
 
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Finally, on December 20, 2013 Division 2, in “Colgate Palmolive Company v. Conopco Inc.” declared that the trademarks “PALMOLIVE SUAVE” (applied for by Colgate) and “SUAVE” (opposed by Conopco), both in Class 3, were not confusingly similar.
 
Colgate had applied for the registration of “PALMOLIVE SUAVE” for all goods in International Class 3 and Unilever (afterwards Conopco) had opposed this application on the basis of “SUAVE” (plain word mark) and “SUAVE” (device), also in International Class 3.  Furthermore, Helen Curtis (subsequently absorbed by Conopco) had also filed an opposition against that application, on the basis of trademark application No. 2,406,582 for “SUAVE”, limited to “preparations for hair styling” in Class 3.
 
Both trials were decided jointly.  In the first instance the judge rejected the oppositions “PALMOLIVE SUAVE” for all goods of Class 3 except “preparations for hair styling”. Here the judge held that the trademarks involved were different and the well-known element “PALMOLIVE” ruled out the risk of consumer deception regarding the identification or origin of the products.
 
The defendant appealed from that decision and argued, inter alia, that the term “SUAVE” was not commonly used in connection with goods comprised in International class 3 since the trademarks containing that element formed part of a word or were used it in a descriptive way. Furthermore, the distinctive power of their well-known trademark “SUAVE” might be diluted or watered down if “PALMOLIVE SUAVE” was registered.
 
The Court of Appeals held that the defendant had no right to prevent that “suave”, a common word, be included in third-party registrations, and that to avoid an “intolerable monopoly” it had to coexist with senior and junior trademarks containing the same element, as this was the consequence of having adopted a commonly used word.  It also stated that if any of the marks involved was to be considered well-known, that was “COLGATE” rather than “SUAVE”, and therefore there was no risk of the defendant’s mark being diluted or watered down.
 
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It interesting to examine these successive decisions involving the defense of Conopco’s trademark “SUAVE” and to note the difficulties and high costs associated with the protection of the use and registration of a highly suggestive mark.
 
For further information please contact:
 
Iris V. Quadrio
 
Carol O’Donnell