Recalling the case...

It all started at the beginning of 2019, when the Caxi brewery Fassbier served extrajudicial notices on a series of breweries in Rio Grande do Sul for the alleged misuse of the term HELLES, claiming to have exclusive use of the expression, given that it had registered the word as a trademark.

Unsatisfied with the notifications sent, in June 2019 Cervejaria Fassbier filed a lawsuit against Cervejaria Abadessa, seeking to have the company banned from producing and selling beer, including by way of an injunction, using the 'trademark' owned by "HELLES", which insisted on exclusive use, registered with the INPI since August 14, 2007, under the number 826076564.

Initially, a preliminary injunction was granted, at which time the Judge of the 4th Court of Caxias do Sul ordered the immediate refrain from producing and selling beer by Cervejaria Abadessa, using the "HELLES" 'brand'.

This decision was the subject of an appeal to the Court of Justice of the State of Rio Grande do Sul, which overturned the injunction, allowing Abadessa to continue its activities, brewing and selling HELLES beer.

The sentence and its reform in the Court...

The case was judged and the position of the court of first instance was upheld to prohibit Cervejaria Abadessa from producing and marketing products containing the "HELLES" 'brand'.

On appeal, the 6th Chamber of the Rio Grande do Sul Court of Justice, in a session held on the 23rd, which brought together Judges Niwton Carpes da Silva (Rapporteur), Gelson Rolim Stocker and Eliziana da Silveira Perez, upheld the appeal brought by Cervejaria Abadessa, dismissing the action as unfounded, as follows: "considering that the trademark that the plaintiff intends to use exclusively - "Helles" - is an expression that does not have the necessary originality to the point of obliging other companies in the brewing industry to refrain from commercial use, it is appropriate to mitigate the exclusivity of the registration, which also immediately dismisses the claim for damages."

This decision can be appealed to the Supreme Court.

Sobre o termo designativo de estilo de cerveja HELLES e o posicionamento do INPI…

Munich HELLES [1], or simply HELLES is a style of beer with a light, golden color, which gives it its name [2]. In German, HELLES means clear, pale [3]. In other words, Munich pale. It has become a technical term used in the industry to describe beer that is clear, sweet, malty and clean on the palate. It is also classified as a sign of a generic, necessary, common or simply descriptive nature, when it is related to the product or commonly used to designate a characteristic of the product in terms of its nature.

The trademark, granted to the plaintiff, was filed with the INPI in 2003 and granted in 2007 and since it was more than 5 years old, it would not be possible to declare the registration null and void due to the expiry of the statute of limitations.

Cervejaria Fassbier, certain of its right to absolute exclusivity, filed an administrative request for the registration of the "RAIMUNDOS HELLES" trademark to be annulled, thus enabling the INPI to rule on the registration of the 'trademark' granted in 2007.

In the judgment of the administrative nullity proceedings, the authority stated that the trademarks subject to the nullity claims - RAIMUNDOS HELLES, use the same expression that makes up applicant FASSBIER's HELLES trademark, however, held that the registrations should not be annulled, since HELLES is "a traditional beer style from Munich, Germany" (https://pt.wikipedia.org/wiki/Helles) and for this reason, it is used to designate beers or any product/service related to the beverage, lacking distinctiveness and therefore unregistrable as an exclusive trademark., sob pena de infração ao artigo 124, VI da LPI.

He added [...] "Perhaps because of this fact - that this type of beer was not yet widespread in Brazil in 2007 - the terminology 'Helles', unaccompanied by any element capable of giving it a sufficiently distinctive form, was granted as a trademark to the PAN applicant, mistake made by the INPI which, however, cannot justify the perpetration of others by the Institute, because, if that were the case, what would be done with the granting of such a trademark would not only be to confer the right to exclusive use as such to the applicant to designate beers, it would be, in fact, to confer on it exclusivity of use, in the brewing segment, of a word of the common heritage of all those who operate in this sector, which is inadmissible" [...].

Finally, it is worth highlighting the following excerpt from the judge's vote Ney Wiedemann Neto on the occasion of the judgment of the interlocutory appeal that overturned the injunction granted in the first degree to prohibit the manufacture and marketing of Helles beer by Abadessa, in which the judge states that: “Fazendo um comparativo com o vinho, seria o mesmo que impossibilitar a denominação de um vinho Merlot de uma determinada vinícola com a referida expressão no rótulo da garrafa, que nada mais é do que um tipo de casta de uva, em razão do registro de uma marca de vinícola com a referida denominação “MERLOT” [4] .

The decision handed down by the Rio Grande do Sul Court of Justice comes as a precedent of extreme importance and repercussion, which ensures, at least for the moment, that Fassbier will not continue to sue other breweries in order to refrain from using the term HELLES.

Case: Appeal no. 5000464-83.2019.8.21.0010

[1] Law 9.279/96. Art. 124. The following are not registrable as trademarks: XVIII - technical term used in industryin science and art, related to the product or service to be distinguished;

[2] Law 9.279/96. Art. 124. The following cannot be registered as trademarks: VI - generic, necessary, common sign, ordinary or simply descriptive, when it relates to the product or service to be distinguished, or that commonly used to designate a characteristic of the product or service, naturenationality, weight, value, quality and time of production or provision of the service, unless they are sufficiently distinctive;

[3] Law 9.279/96. Art. 124. The following are not registrable as trademarks: VIII - colors and their designationsunless they are arranged or combined in a peculiar and distinctive way;

[4] Excerpt from the vote of the Reporting Judge Ney Wiedemann Neto on the occasion of the judgment of the interlocutory appeal that overturned the injunction granted in the first degree to prohibit the manufacture and sale of Helles beer by the Appellant Abadessa (Interlocutory Appeal No. 5005803-05.2019.8.21.7000, judged on 05/12/2019).

By: Vanessa Pereira Oliveira Soares

Intellectual Property | CPDMA Team