Nail polish manufacturers have been fighting for ‘brownie’ in court for eight years

“Madrugada” and names of gastronomic origins such as “bombocado”, “ganache”, “brownie” and “rocambole” are at the focus of a dispute in the courts that has dragged on for eight years. On the one hand, the Vult brand, now controlled by the Boticário group, and on the other, Dailus, from the manufacturer Puella. Both were using the same names on their nail polish.

But Justice has just given Vult right. According to a decision of the 5th Civil Court of the TJ-SP (Court of Justice of the State of São Paulo), Dailus must discontinue the use of the five denominations in its nail polishes, since Vult has the right to exploit the names in this product category. .

The Boticário group’s brand is registered with the INPI (National Institute of Intellectual Property) for the exclusive use of the expressions “bombocado”, “ganache”, “brownie”, “rocambole” and “madrugada” in nail polish.

By the decision, Dailus must withdraw its nail polishes from the market and pay an indemnity of R$ 25 thousand, under penalty of a daily fine of R$ 2,000.

At the center of the dispute between the two cosmetics manufacturers is a market that has grown again this year in Brazil, after two consecutive years of decline, due to the pandemic, according to data from consultancy Euromonitor International. The sales of nail polishes in the country this year should be around R$ 1.8 billion (US$ 333 million).

The national market – the second largest in the world, only behind the United States – is dispersed, although it counts with great brands at the top of the ranking, such as Risqué, by Coty, and Colorama, by L’Oreal.

THE Sheet found that other nail polish brands also use names patented by Vult: such as Top Beauty, with “ganache”, and Cora, with “rocambole”. Asked if it will also sue them in court, Vult did not respond.

Through its press office, the Boticário group brand sent a note in which it says that “the process reinforces the brand’s commitment to its customers and to its broad portfolio of products” and that “the names used by the competitor must be changed.”

The Court, however, denied Vult’s request to condemn the Dailus brand for violating the “trade dress” (set of image) on the packaging.

According to the judgment, the expert report concluded that Dailus’ enamels are visually different from Vult’s: “Unlike the Applicant [a Vult], [a Dailus] adopts (i) a cylindrical and elongated lid, without a superior angle, in white (or, sometimes, in the color of the enamel); (ii) conical container, with a triangular base; and (iii) two applications of the mark, in relief, on two of the sides of the container, as well as the fact that two collisions [semelhanças entre marcas]as it was found in the objects of the dispute, to be common in the segment.”

By the decision, Puella, owner of Dailus, must bear two thirds of the costs and expenses of the process, while Vult pays the other one third.

According to the sentence, “currently, the trademark is not only intended to ensure the rights or interests of its owner, but aims, above all, to protect the purchasers of products or services, providing them with subsidies to assess the origin and quality of the product or service, with the aim of also preventing the illegal diversion of customers and the practice of parasitic economic profit.”

Questioned by the report, Puella informed, through its press office, that “although it respects judicial decisions, the company understands that in this case there was a clear misunderstanding of interpretation, insofar as the terms whose prohibition was given refer to ‘colors’ of nail polishes, in common use”, he informed.

“Furthermore, the colors used by Dailus were absolutely different from the competitor”, he said.

The company assures, however, that it changed the names of the colors, interrupted the production and the sales and informed the distributors, requesting the return of the stocks.

“From August 2018, we requested the collection of ‘bombocado’, ‘ganache’, ‘brownie’, ‘until dawn’ and ‘rocambole’ nail polishes. They had their names changed to ‘doce de coco’, ‘gianduia’ , ‘chocolate cake’ and ‘masquerade’, respectively. The rocambole glaze was discontinued on the same date”, says the company.

According to Puella, “the case is in the process of complying with the sentence, awaiting a court decision regarding the challenge offered by Dailus.”

The report found, however, that internet searches for “brownie glaze” still lead to the Dailus product.