After four years of litigation between Yakult S.A. Indústria e Comércio and Kabushiki Kaisha Yakult Honsha against Laticínio Belo Vale Ltda., the Court of Justice of the State of Paraíba ultimately ruled against the Japanese multinational. The decision allows Laticínio Belo Vale Ltda to continue using its fermented milk packaging, despite the alleged similarity to the packaging of the fermented milk identified by the mark YAKULT. The decision highlights the limits of trademark and trade dress protection under Brazilian law.
The dispute began when Yakult, which holds it’s the highly renowned three-dimensional packaging trademark YAKULT, filed a lawsuit against Laticínio Belo Vale, the manufacturer of the fermented milk product identified by the composite mark, a competing brand. Yakult claimed that the packaging of the Isinho product infringes its trademark rights and constitutes unfair competition.
Laticínio Belo Vale argued, in its turn, that the packaging shape had become widespread and is now considered a market standard, in addition to serving an ergonomic function, which prevents Yakult from claiming exclusive rights over the package design.
The decisive factor in the judge’s ruling was the technical expert report, which showed that, although the packaging shapes are similar, the form is indeed a market standard and serves a functional purpose. Furthermore, according to the referred report, the images and colors on the labels differ, reducing the likelihood of consumer confusion. The court also noted that Yakult only began legal actions against competitors over this packaging in 2017, even though the brand has been in the market for more than 50 years.
Therefore, the judge ruled that Yakult’s claims were unfounded. Despite holding a highly renowned mark, Yakult’s failure to enforce its rights over decades resulted in a significant disadvantage and weakened its position. As the magistrate stated: “Although the high renown status reinforces distinctiveness, prolonged inaction by the rights holder in preventing similar uses can, in fact, lead to the dilution of the mark.”
This finding, along with the absence of consumer confusion, not only secured a relevant judicial victory for Laticínio Belo Vale, but may also set a precedent for similar actions Yakult may wish to pursue. In the long term, it could even jeopardize the High Renown status of Yakult’s mark with the Brazilian Trademark Office (INPI). The case underscores the importance of timely and diligent action by trademark owners to safeguard their intangible assets.
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Advogado(a) autor(a) do comentário: Fernanda Carmagnani Rodrigues, Lígia Ferreira Marcondes Rocha e Cesar Peduti Filho, Peduti Advogados
Fonte: Juiz nega pedido da Yakult para que leite fermentado Isinho troque de embalagem – https://www.jota.info/justica/juiz-nega-pedido-da-yakult-para-que-leite-fermentado-isinho-troque-de-embalagem
Na briga das marcas, Yakult leva a pior na luta contra laticínio paraibano – https://movimentoeconomico.com.br/empresas/2025/11/25/na-briga-das-marcas-yakult-leva-a-pior-na-luta-contra-laticinio-paraibano/
Inteiro teor da sentença do processo nº 0817669-21.2021.8.15.2001 – Site TJPB
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