Brazil is currently the stage of a lawsuit filed by Sanofi Medley against Cimed, two major companies in the pharmaceutical industry, on the grounds of unfair competition and trade dress infringement involving medications marketed by the defendant. The case is pending before the 1st Business Court and Arbitration-Related Disputes of the Central Civil Court of São Paulo.
According to the allegations brought by Medley, the medications commercialized under the defendant’s marks Alegormine, an anti-allergy drug, and Nevralgex, a muscle relaxant, allegedly infringe the trade dress of its products Allegra and Dorflex, which are likewise intended for the relief of allergy symptoms and muscle pain.
It is important to note that the Industrial Property Law does not expressly mention trade dress; however, the legislation classifies certain acts of unfair competition as liable for compensation, which leads to the understanding that trade dress infringement is protected by law, according to Article 209 of the mentioned Law:
Art. 209. The injured party reserves the right to claim damages in compensation for losses caused by acts of infringement of industrial property rights and acts of unfair competition not provided for in this Law, which tend to damage the reputation or business of others, to create confusion between commercial or industrial establishments or service providers, or between products and services placed on the market.
In the case at hand, Medley’s allegations revolve around the fact that its medication Allegra features a purple packaging, whereas Cimed’s Alergomine is likewise commercialized in purple packaging. In the same way, the Plaintiff claims that its other medication intended for muscle pain relief, identified by the mark Dorflex, has blister packaging in orange, while the defendant’s competing product Nevralgex also features blister packaging in the same color.
The defendant, Cimed, disagrees with the allegations presented and states that it “uses colors consistent with trends in the therapeutic category” and that the matter had already been examined by CONAR (National Council for Advertising Self-Regulation) in 2024, with the Sixth Chamber of that body ruling that there is no possible confusion for consumers, unless they are extremely inattentive. Despite this, CONAR recommended changing the packaging to avoid any possibility of confusion.
Disputes of this nature are particularly delicate and require a careful technical analysis to determine whether there has indeed occurred an act of unfair competition capable of causing consumer confusion.
In order to effectively mitigate any risk of trade dress infringement, it is advisable to conduct a common law search (which includes trademark search), by previously assessing all potential legal risks prior to the launch of any product, including a review of its overall visual elements (identity and packaging), so as to ensure that there is no infringement of another product’s visual identity that could cause consumer confusion and thereby constitute acts of unfair competition.
Lastly, a common law search should be conducted with the assistance of specialized professionals, so as to avoid any harm to those seeking to market and promote their products and services.
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Author: Daniela Russo, Lígia Ferreira Marcondes Rocha and Cesar Peduti Filho, Peduti Advogados.
Source: https://timesbrasil.com.br/empresas-e-negocios/medley-x-cimed-a-milionaria-batalha-judicial-pelo-visual-dos-remedios-allegra-e-dorflex/
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“For further information on this topic, please contact the authors or the managing partner, Dr. Cesar Peduti Filho.”