Is dressing champagne a good idea?

(1) Introduction

Brazil has a pioneer part on the international community of intellectual property protection. Notwithstanding the fact that Brazil was a founder member of the Paris Convention (CUP) and of the TRIPs - Trade Related Aspects of Intellectual Property Rights; the largest South-American country edited its first trademark law at 1875 (Decree 2.682), while its first patent provision was emitted at early 1809 (Alvará of April 28^th).

Currently, the Brazilian Constitution of 1988 (article 5^th, XXIX) provides protection of trademark property, meanwhile it also protects tradenames and other distinctive signs. Such "broad" category of distinctive signs also reaches, between others, domain names, de facto trademarks (not registered), publicity expressions, trade dress and geographical indications (IGs).¹

In March of 2026, the Brazilian Superior Court of Justice (STJ) ruled on an interesting case filed by the French NGO Comité Interprofessionnel du Vin de Champagne (CIVC - plaintiff), against the defendants Brazilian Industrial Property Office (INPI) and a company called Rosa Champagne Modas Ltd. (ROSA) The issue concerned the registration of four nominative and figurative trademarks, with its nuclear expression being "CHAMPAGNE", in favor of the Brazilian fashion store.

(2) Development

IGs protection in Brazil is a part of an old tradition, and differently from regular trademarks, its legal function is bonded to a specific origin². As previously mentioned, the adhesion to CUP and TRIPs made Brazil compliant with every international commitment to the respect of such distinctive sign. Actually, the Brazilian Industrial Property Code (Law 9,279/96) protects the interested party of obtaining an IG registration (proactive approach - articles 176-182), while also avoiding registration of an IG nuclear expression as a trademark (preemptive approach - articles 2, IV, 124, IX and X).

In this rich regulatory context, CIVC filed an invalidation lawsuit (combined with comminatory and compensatory pleas) seeking to decree as void four decisions that INPI made in favor of ROSA fashionwear company. The comprehension of the French NGO was that such registration of ROSA's trademarks would violate the anteriority of IG201102, registered since 2012.

ROSA's defense thesis, in which it received the legal company of INPI, was that its area of commerce was completely different from the economic sector of CIVC. In other words, clothes and shoes in commerce could not be seen as linked with French sparkling famous wines. This could be summarized as the specialization limitation to distinctive signs protection, which means that the social function³ of such property is confined to a specific area of initiative.

On the other hand, CIVC proposed an oppositive interpretation of Law in the sense that IGs, such as high renowned trademarks, are not "oppressed" by the specialization principle. The protection of the nuclear expression CHAMPAGNE, by its international fame, should reach any and every area of commerce. Since the Brazilian Law was not specific in such matter, the overwhelming and illimited exclusivity protection should be applied in CIVC favor.

(3) All Brazilian Federal Courts Ruled Against CIVC's Thesis

Undoubtfully, CIVC was the most powerful private party in such litigation. Being the holder of the - perhaps - most prestige beverage IG of the world, and well represented by some of the most respectful IP attorneys in Brazil; the thesis of the plaintiff was very clear and persuasive.

On the other hand, this micro entrepreneur company focused - predominantly - in female clothes and shoes insisted on the fact that the trademarks registration involved the nominative expressions ROSE/ROSA and CHAMPAGNE, with the figure of a drawn rose and a heart-shaped rose. In fact, the trademark was an evocative mention to a tone of rose known on the fashion business as champagne-rose.

In essence, the 9^th Federal Trial Court Level of Rio de Janeiro emitted a merits opinion⁴ against the plaintiff, giving emphasis that while the CHAMPAGNE IG registration concerned sparkling wine, ROSA's registration addressed the fashion market.

Unsatisfied, CIVC appealed against the Trial Court Level decision, but the 2^nd Specialized Appeal Court – 2^nd Federal Circuit⁵ did not change the merits of the Trial Court level decision. In fact, the Appeal Court level adopted the polemic - and economic argumentative - path of a per relationem decision.

Once more, CIVC filed an (special) appeal that, after some procedural comebacks, reached the Superior Court⁶. Unanimously, the 4^th Chamber of STJ maintained the decision reached by the Trial and Appeal Federal Court levels. The prevailing arguments were (a) the specialization rule⁷ (wines and clothes are not at competition in the market), (b) the lack of confusion of the consumers⁸, and (c) well as previously case law of the Superior Court. In one of the previous cases quoted at the opinion, MOET CHANDON lost a trademark case involving CHANDON nominative sign that was registered by INPI in favor of a discotheque. At that mentioned precedent, the fame itself was not sufficient to avoid the free initiative of a private party of another economic segment.

(4) Conclusion

Brazilian Federal Courts offered steady merits decisions in such distinctive signs case (IGs vs. Trademark owners), without any kind of a rollercoaster path. This kind of predictability endorses the value of legal certainty, well as demonstrates that a high-profile plaintiff may not win in the Judiciary power if the better legal reasoning corroborates the smaller company.

Besides the interesting case itself, the ruling gives emphasis on limiting the enforcement capacity of distinctive signs (every kind of them), avoiding the analogous application of the special treatment destined to the exceptional regime of very famous trademarks. Although IG protection is a national priority in Brazil, one would not gain exceeding such protection barely to function as a defensive sign. Free initiative is one of the main structures of Brazilian capitalist society, and the protection against a sign dilution⁹ should be limited to the legal foreseen cases at the most.

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1 BENTLEY, Lionel; SHERMAN, Brad. Intellectual Property. 3rd ed. New York: Oxford University Press, 2009. p. 975.

2 PORTO, Patricia Carvalho da Rocha. Quando a Propriedade Industrial Representa Qualidade. Marcas coletivas, Marcas de Certificação e Denominações de Origem. Rio de Janeiro: Lumen Juris, 2011, p. 16.

3 BARBOSA, Pedro Marcos Nunes. Curso de Concorrência Desleal. 2ª Edição, Rio de Janeiro: Lumen Juris, 2024, p. 69.

4 9th Trial Federal Court of Rio de Janeiro, Federal Judge Ana Amelia Silveira Moreira Antoun Netto, docket 0198842-58.2017.4.02.5101, ruled in 09.20.2018.

5 TRF-2, 2ª Specialized Chamber, Appeal Federal Judge Marcello Ferreira de Souza Granado, docket 0198842-58.2017.4.02.5101, ruled in 06.28.2021.

6 STJ, 4th Chamber, Justice Maria Isabel Galloti, docket REsp 2.246.423, ruled in 03.06.2026.

7 Brazilian Commercial Law professor mentions a hypothetical case that would reach an opposite legal result: the registration of PORT as a trademark by a Brazilian entrepreneur that wished to sell Port wine: FERREIRA, Waldemar. Tratado de Direito Comercial. O Estatuto do Estabelecimento e a Empresa Mercantil - Sexto Volume. São Paulo: Saraiva, 1962, p. 295.

8 Brazilian top IP Law author advocates the possibility of registration of trademark that correspond IG nuclear expression, if no risk of confusion could be reached: BARBOSA, Dênis Borges. Proteção das Marcas. Uma perspectiva Semiológica. Rio de Janeiro: Lumen Juris, 2008, p. 339.

9 About dilution protection on USA, JANIS, Mark D. Trademark and Unfair Competition. 2nd Edition, Albuquerque: West Academic, 2017, p. 283.