On 12 June 2003, Colgate Palmovile Company applied for the registration of the nominative sign ‘360º’ covering products in classes 3 (Mouthwashes, namely dentifrices; mouthwashes, oral humidifiers and toothbleaching products) and 21 (toothbrushes, electric toothbrushes, floss for dental purposes, toilet brushes, toilet utensils and toilet cases).

On 29 July 2004, INPI issued a decision granting the registration for all the products, but electric toothbrushes, considering that, in relation to those products, the sign was exclusively made up of indications that may serve in commerce to designate the type, quality, quantity, purpose, value, geographic origin, period or means of production of electric toothbrushes (i.e. a descriptive sign). Colgate appealed of this decision.

Almost ten years after, on 17 June 2013, the Commercial Court affirmed INPI’s decision, stating that, facing such sign, a consumer would immediately think and associate it with a particular electric toothbrush characteristic: the fact that it is a 360 degree rotating toothbrush.

Not satisfied with this decision, Colgate appealed the First Instance court ruling to the Lisbon Court of Appeal. In its statement of grounds, the company claimed that an average consumer would not associate the sign with any particular characteristic of the product, but, instead, would relate it with a highly effective mouth cleaning device, capable of comprehensive and thorough cleaning. In fact, such was the common meaning of the expression in other registered trade marks in Portugal and was also coherent with the meaning that the expression has in other economic sectors. Further, it claimed that Portuguese average consumer was already familiar with the sign, as the same was used independently or together with other elements, in several international trade marks owned by Colgate, including one currently valid in Portugal (International Trade Mark no. 851995). All these facts, according to the appellant, would result in the consumer associating the ‘360º’ sign with Colgate and with Colgate’s products and, therefore, the trade mark would be distinctive.

The Appeal Court refused Colgate’s arguments, stating that the expression ‘360º’ was a generic element, as it is included in every citizen common language to identify a certain degree of rotation of an object. It further stated that independently of the most common association made by an average costumer, the important is the undifferentiated nature of the expression and, consequently, the fact that it is devoid of distinctiveness. Finally, the court stated that no evidence had been provided of any acquired distinctiveness / secondary meaning and that the registration of other trade marks was not enough to demonstrate it. In fact, the existence of several other trade mark registrations (both domestically and internationally) was in fact indicative of the common and generic nature of the expression. Therefore, INPI’s and Commercial Court decisions were affirmed and the sign registration does not cover electric toothbrushes.

Both the Commercial Court and the Court of Appeal rulings can be found (in Portuguese) in Intellectual Property Bulletin no. 008/2014 (13 January).