Judicial Acknowledgement of the Secondary Meaning Doctrine

The possibility of certain signs acquiring a secondary meaning through use has recently been acknowledged by Division I of the  Federal Court of Appeals on Civil and Commercial Matters in the case “Unilever N.V v. Laboratorio Cuenca S.A. – Cease of use of trademark, Case No. 1135”.

In this case, which discussed the possibility of registering the trademark “SUAVE” (the Spanish version of “soft”) to identify goods in international class 3, the Court of Appeals concluded that Unilever’s mark “SUAVE” had acquired a secondary meaning in connection with shampoo.

In so deciding, the Court of Appeals took into consideration that Unilever had proved that, together with its local Argentine affiliate, they had commenced use of “SUAVE” for shampoo in June 1999, that their channels of sales were mainly the most important supermarkets and that the brand was very well established in the market.

In conclusion, the Court admitted that certain signs lacking inherent distinctiveness can nevertheless acquire the necessary distinctiveness through the development of secondary meaning and, thus, be registered as trademarks.