The 3rd Panel of the STJ upheld the decision of the TRF-2, which rejected BMW’s request to annul DASA’s trademark. The Court ruled that the logos of both companies do not generate a risk of consumer confusion and can coexist based on the principle of specialty. Justice Nancy Andrighi, rapporteur of the case, voted to reject BMW’s appeal, highlighting the impossibility of re-examining evidence in the higher court. The TRF-2 had already concluded that there was not enough similarity between the visual signs of the brands and that BMW did not prove the existence of unfair competition.
Initially, BMW argued that the Distribuidora Automotiva would be using three inclined stripes in the colors light blue, dark blue and red, striking characteristics of BMW’s visual identity. The company maintained that such use would create an undue association between the companies and could confuse consumers, diverting customers and affecting their reputation. To support its thesis, BMW invoked provisions of the Industrial Property Law (Law No. 9,279/1996), which protect trademarks against reproduction, imitation or improper associations that may mislead the public.
DASA countered the allegations, arguing that its visual identity had its own characteristics and was not a copy or imitation of BMW’s visual elements. The company claimed that the use of inclined stripes in the automotive sector was common and widely employed by several brands, not being a distinctive element exclusive to BMW. It also argued that the registrations granted by the BPTO followed technical and legal criteria that guaranteed their originality, and that there was no confusion among consumers.
The BPTO defended the validity of the registrations granted to Distribuidora Automotiva, arguing that the technical analysis carried out did not identify improper imitation or possibility of confusion between the visual signs of the trademarks in question. It emphasized that similar graphic elements could coexist as long as they were accompanied by distinctive features, as permitted by law.
In judging the case, the trial judge understood that BMW’s arguments were not sufficient to demonstrate that the trademarks registered by DASA constituted an improper reproduction or imitation of its distinctive signs. The sentence emphasized that BMW’s visual identity, although widely recognized in the market, does not have exclusivity over the use of inclined stripes in certain colors, especially when there are structural differences in the way the brands are presented.
The judge based his decision on the principles of specialty and distinctiveness of trademarks. According to the ruling, the trademark of Distribuidora Automotiva contained its own word elements and other graphic aspects that substantially differentiated it from BMW’s visual identity. In addition, it considered that the coexistence of the brands in the market for a long period without records of effective confusion on the part of consumers reinforced the thesis that there was no risk of undue association between the companies.
Another point addressed in the decision was the application of the distance theory, a principle widely accepted in trademark law. The judge pointed out that, although the trademarks could have certain graphic elements in common, the way they were used in the market, combined with other distinctive characteristics, ruled out the possibility of confusion. It was also pointed out that, in matters of industrial property, the exclusive right granted to the owner of a trademark does not extend to generic elements or widely used in the sector.
In view of this scenario, the judgment dismissed BMW’s claims, maintaining the validity of the Distribuidora Automotiva registrations and removing any obligation of indemnification or abstention from using the questioned visual identity.
Dissatisfied, BMW filed an appeal to the Federal Regional Court of the 2nd Region, reiterating its arguments about the alleged imitation of its visual identity and reinforcing the need to annul the registrations granted by the BPTO. However, the Court upheld the decision of the first instance, concluding that there was insufficient evidence to characterize the infringement of BMW’s trademark rights. The ruling reinforced the understanding that there was no reproduction or imitation capable of causing confusion in the consuming public, highlighting that the visual identity used by Distribuidora Automotiva did not compromise the distinctiveness of the BMW brand.
In addition, the Court understood that the Federal Court was not competent to judge the claim for compensation made by BMW, considering that the issue should be considered by the common civil sphere. Thus, in addition to having its appeal denied, BMW was ordered to pay attorney’s fees.
Finally, the decision was submitted to the Superior Court of Justice, which fully upheld the understanding of the Federal Regional Court of the 2nd Region, confirming the dismissal of BMW’s requests. Thus, the case was closed with the maintenance of DASA’s trademarks and the rejection of BMW’s allegations, consolidating the understanding that the visual identity used by the defendant company did not violate the trademark rights of the German manufacturer.
—
Author: Carlos Roberto Parra e Cesar Peduti Filho, Peduti Advogados.
Source: https://www.migalhas.com.br/quentes/425850/stj-nega-pedido-da-bmw-e-mantem-validade-de-logo-da-dasa
—
“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”