Trade dress, understood as the overall look and feel of a product or its packaging, encompassing elements like size, shape, color, texture, graphics, and even sales technique, plays a crucial role in distinguishing goods and services in the marketplace. In Brazil, unlike some other jurisdictions, the protection of trade dress does not stem from a specific statutory provision explicitly defining and protecting it as a distinct intellectual property right. Instead, its safeguarding is primarily a result of jurisprudential construction, where courts consistently interpret trade dress infringement as a form of unfair competition, falling under the broad principles of illicit acts provided for in the Industrial Property Law. This judicial approach recognizes the consumer’s right not to be misled and the legitimate entrepreneur’s right to protect their distinctive commercial identity.
Given its protection under the umbrella of unfair competition, actions for trade dress infringement in Brazil typically do not necessitate prior registration of the specific visual set of visual elements with any intellectual property office. This means a company does not need to have formally registered its trade dress to seek redress against imitators. However, while not a prerequisite, the existence of registered intellectual property rights such as trademarks, industrial designs, or copyrights for specific elements within the trade dress can significantly bolster a case. Such registrations can provide stronger, more easily verifiable grounds for infringement, making the overall assessment of the unlawful conduct more straightforward for the courts.
The evidentiary process for proving trade dress infringement in Brazil often hinges on a specialized technical assessment known as a semi-optic survey. This expert analysis typically unfolds in two main stages. Initially, the survey evaluates the distinctiveness of the original trade dress by comparing it against similar products already existing in the market. The goal here is to establish that the trade dress in question possesses sufficient originality and capability to differentiate the product from its competitors. In the second stage, the expert then performs a direct comparison between the original, distinctive trade dress and that of the alleged infringer, meticulously identifying similarities that could lead to consumer confusion or undue association.
Despite the robustness of the semi-optic survey, obtaining preliminary injunctions to halt the use of infringing trade dress can be a challenging endeavor in Brazil. This difficulty arises precisely because of the inherent need for this specialized expert analysis, which is typically conducted during the discovery phase of a lawsuit. Brazilian judges often exhibit skepticism towards unilaterally produced evidence, such as private pre-litigation infringement analyses commissioned by the plaintiff. While these preliminary analyses are essential for a plaintiff to gauge their likelihood of success before committing significant resources to a full-blown judicial action, they rarely suffice on their own to convince a judge to grant an urgent, temporary prohibition without the benefit of an impartial court-appointed expert.
To mitigate this challenge and increase the prospects of securing a preliminary injunction, a particularly effective strategic measure is the initiation of an “action for preliminary evidence production”. This procedural mechanism allows the plaintiff to request the court to appoint an expert and conduct the semi-optic survey at a very early stage of the dispute, even before the main lawsuit for infringement is formally filed. By doing so, the crucial technical evidence is generated under judicial supervision and with the participation of both parties (or at least their notification), lending it significant credibility.
While initiating an action for preliminary evidence production inevitably means anticipating the main costs associated with the expert survey, this approach often proves to be more expeditious than awaiting the completion of the entire judicial process for the main infringement action to reach its evidentiary phase. Critically, an expert report confirming infringement, ensuring both parties have a chance to challenge the evidence, provides a powerful and reliable basis for a subsequent request for a preliminary injunction in the lawsuit, offering a much higher degree of certainty for its deferral by the court.
It is also important to acknowledge that the concept of trade dress, despite its growing recognition, is still relatively new in the landscape of intellectual property protection in Brazil when compared to more established rights like trademarks and patents. Consequently, there remains considerable scope for jurisprudential development and refinement, particularly concerning the specific criteria and nuances involved in assessing distinctiveness and potential for confusion. This ongoing evolution means that legal strategies in trade dress cases must remain flexible and adaptable to emerging judicial interpretations.
In conclusion, while the protection of trade dress in Brazil relies on a jurisprudential interpretation of unfair competition rather than specific statutory provisions, it nonetheless offers a vital tool for safeguarding a business’s distinctive commercial identity. Navigating the evidentiary requirements, particularly the need for a semi-optic survey, presents challenges for obtaining swift preliminary injunctions. However, strategic use of procedural tools like the action for preliminary evidence production can significantly enhance a plaintiff’s ability to secure timely judicial intervention, effectively combating imitative practices and preserving market distinctiveness, even as the legal framework continues to mature.
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Author: Mariana de Araújo M. Lima Di Pietro, Thaís de Kássia R. Almeida Penteado and Cesar Peduti Filho, Peduti Advogados
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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”