Hawaiian Tropic Secures Its Trademark at INPI After 30 Years of Litigation

SHELTON, Connecticut, 31 de outubro de 2023 /PRNewswire/ – After 30 years of a complex legal dispute, the globally renowned sun care brand “Hawaiian Tropic” has obtained protection at the Brazilian Patent and Trademark Office (INPI). With top-tier expertise and counsel from law firm Kasznar Leonardos, Hawaiian Tropic successfully invalidated the registration of the same brand trademark by an opposing organization.

For decades, the U.S. company Edgewell Personal Care  parent company “Hawaiian Tropic, engaged in a legal dispute in Brazilian courts to obtain the trademark registration for the, “Hawaiian Tropic” brand name. The company, first initiated the process with INPI in 1992.At this time, the agency rejected the application due to an already registered homonymous mark held by a Brazilian company. Despite numerous attempts over the years, the company was unable to secure the right to use the name.

In 2016, in collaboration with Kasznar Leonardos, Edgewell Personal Care filed a lawsuit against the owner of the competing trademark and INPI, seeking to annul the existing registration. After three years of diligent legal battle, the court declared the nullity of the pre-existing registration.

Rafael Lacaz, attorney and senior partner at Kasznar Leonardos, highlighted the complexity of the case, which involved a registration obtained by a national company dating back to 1992. “Regarding the statute of limitation, the Brazilian IP law sets a five-year period for a nullity action to be filed after the issuance of registration. Since the third party’s registration dates back to 1992, our challenge was to present compelling evidence for the court to consider the possibility of bad faith. this, we presented numerous documents showcasing the history of the ‘Hawaiian Tropic’ brand globally and in Brazil proving the bad faith of the defendant company”.

As a result, the court ordered INPI to grant the registration for the “Hawaiian Tropic” mark to Edgewell Personal Care. The court also ordered the defendant company to cease any use of the “Hawaiian Tropic” mark, under penalty of fines for non-compliance, even with a subsequent appeal, where the judgement was still upheld in it’s entirety.

In Brazil, it has become increasingly common for foreign companies to regain control of brands previously registered by Brazilian companies at INPI.

Lacaz noted, growing number of individuals engaging in unfair practices and seeking benefits through bad faith and unfair competition: “we are proud to have closed this case and helped the Hawaiian Tropic trademark remain under the ownership of Edgewell Personal Care”.

To learn more about Hawaiian Tropic, it’s products and the brand, please visit https://www.hawaiiantropic.com/.

You can learn more about Edgewell Personal Care at https://edgewell.com/.