COMENTÁRIO – Trata-se de caso típico de violação de direito marcário, suscetível de causar confusão ou associação com marca alheia. A Lei 9.279/96, especificamente em seu artigo 124, inciso XIX, veda o registro como marca o termo que reproduza ou imite, no todo ou em parte, ainda que com acréscimo, marca alheia registrada. Nesse sentido a BRF S/A (antiga Perdigão), ajuizou demanda em face da Pepsico, por entender que as duas marcas concedidas pelo Instituto Nacional de Propriedade Industrial – INPI, ambas com o elemento nominativo “CHESTER CHEETAH”, deveriam ser anuladas em razão da reprodução com acréscimo de sua marca. Por outro lado, a Pepsico além de entender que o termo “CHESTER” é genérico, o INPI ao conceder a marca a BRF S/A não fez ressalva ao direito exclusivo de sua utilização, não havendo que se falar em violação da marca. A Justiça Federal da Seção Judiciária do Rio de Janeiro, entendeu que as marcas da BRF S/A se situam no campo das denominações genéricas, acarretando por fim a coexistência de ambas as marcas, não havendo que se falar em violação marcária. Todavia, o Tribunal Regional Federal, ainda que por maioria de votos, entendeu que a apropriação de um vocábulo designativo territorialmente conhecido, acompanhado de outras expressões, atua no sentido de enfraquecer o signo original, traduzindo ato de concorrência parasitária, passível de nulidade. Entretanto, referida decisão foi posteriormente reformada em sede de Embargos Infringentes pelo Tribunal Regional Federal da 2ª Região. Sobre o caso em questão, a Terceira Turma do Superior Tribunal de Justiça, em sede de Recurso Especial, manteve o entendimento final do Tribunal Regional Federal, por entender que a simples demonstração de semelhança entre os sinais não infringe a marca. Como visto, a Justiça Pátria entendeu que não houve qualquer infringência a marca da BRF S/A por utilizar o termo “CHESTER CHEETAH” para designar o seu produto. Ademais, em minha opinião, a questão é bem complexa, pois ainda que o Superior Tribunal de Justiça tenha entendido não haver qualquer violação marcária e os produtos fabricados serem distintos, a marca acaba se desgastando em razão da coexistência de produtos com o termo “CHESTER”, podendo acarretar ainda associação indevida e confusão perante o público consumidor.

“*Este comentário foi redigido meramente para fins de enriquecer o debate, não devendo ser considerado uma opinião legal para qualquer operação ou negócio específico.“

Notícia comentada por Vitor Luis Sbrana Merici.

Marca Chester Cheetah pode ser utilizada em salgadinhos da Pepsico

  A Terceira Turma do Superior Tribunal de Justiça (STJ) rejeitou recurso da BRF S/A (antiga Perdigão Agroindustrial), dona da marca Chester, e manteve decisão de segunda instância que considerou possível a coexistência com a marca Chester Cheetah, de propriedade da Pepsico Incorporation. A BRF ajuizou ação de nulidade das marcas mistas Chester Cheetah, utilizadas em salgadinhos, pretendendo exclusividade na exploração da marca nominativa Chester, que designa uma ave geneticamente modificada e foi registrada no Instituto Nacional da Propriedade Industrial (INPI) em 1982. O juízo de primeiro grau não acolheu o pedido, pois entendeu que o elemento figurativo da marca de salgadinhos, sob a forma estilizada de um felino usando tênis e óculos escuros, e o elemento nominativo Cheetah são, por si só, suficientes para não induzir o consumidor em dúvida ou erro quanto à origem dos produtos adquiridos. Sem similitude O Tribunal Regional Federal da 2ª Região (TRF2), por maioria, reformou a sentença por considerar que a expressão Chester diz respeito unicamente à marca da BRF. “A apropriação de um vocábulo designativo de uma marca amplamente conhecida, ainda que acompanhado de outras expressões ou de elementos figurativos, atua no sentido de enfraquecer o signo original”, afirmou o TRF2 em sua primeira decisão. Inconformada, a Pepsico interpôs embargos infringentes. O TRF2, ao analisar o recurso, concluiu que não há similitude entre as marcas capaz de gerar confusão ou associação indevida pelo consumidor, tampouco prejuízo para a reputação da marca original.   Revisão de provas O relator do recurso, ministro Moura Ribeiro, destacou que, conforme reconhecido pelo TRF2, não ficou demonstrada situação que pudesse gerar confusão entre as marcas. Para modificar o que foi decidido pelo tribunal regional, seria necessária a reanálise de fatos e provas dos autos, o que é vedado pela Súmula 7 do STJ. Por essa razão, o ministro não conheceu do recurso especial da BRF, decisão confirmada pelo colegiado da Terceira Turma.

Fonte: http://www.stj.jus.br/sites/STJ/default/pt_BR/noticias/noticias/Marca-Chester-Cheetah-pode-ser-utilizada-em-salgadinhos-da-Pepsico

The decision given by the Third Civil Court of São Paulo emphasizes the importance of the copyright registration in Brazil – which is often overlooked by the authors in general. According to the Brazilian Copyright Act, the protection of intellectual works (such as photos) arises from its creation, regardless of prior registration – therefore, the registration itself is not required by means of law. The author is the person entitled to pursue the registration before the responsible authorities and this measure can help to solve any conflict like the mentioned in the news, considering that the registration can be used as proof of authorship and date of creation of the intellectual work until the presentation, by any party, of other proof showing the opposite. The issue mentioned in the news shows that the author actually took care to pursue the registration of his photographs before the responsible authority regarding, which was a decisive factor to obtain the favorable decision given. In addition, the Third Civil Court of São Paulo also ruled that, even if the authorship was not proven, the claimant would be assumed as the owner of the photos, since he was the first to announce himself as the author of the works. However, this assumption could easily been dismissed if the defendant had made any proof capable to put in doubt the authorship of the claimant. The decision in reference shows the importance of the registration procedure of intellectual works before the responsible authorities.  

If photographer announces to be an author of the image, it’s up to who used prove otherwise

The photo is protected as a work of artistic creation and the photographer owns the copyright. To be the weakest part of the relationship, if the photographer publicly announces the image authoring, it is up to those who used the photo to prove otherwise. Following this understanding, the judge Luis Fernando Nardelli, the third Civil Court of São Paulo, condemned a travel company to compensate a photographer to use six photos without giving proper credit. Represented by lawyer Robert Wilson Furtado, Wilson Roberto Consulting and Legal Advice Office, the photographer filed action seeking compensation for material damage by having used the image without acquiring the rights, and for moral damages, for not credited the image to the author. According to Roberto, we used six images of the photographer’s collection that had been recorded at the National Library and notarized. Analyzing the case, the judge Luis Fernando Nardelli understood that the photographer was right. For him, “the company took advantage of the author’s work and publicized the photographic work illegally, without authorization, for profit, failing to pay the author for carrying on the work of authorship.” For the judge, it was proved in the records, the documents attached, the authorship of the images. Nardelli also noted that, even if it was not proven authorship with documents, copyright rights rules should be interpreted in favor of the intellectual creator, “presumably the weaker party ” . ” A lot of rebuttable presumption in favor of the plaintiff to be the creator of an intellectual work since it was the first to advertise as such , while the reverse proof to the contrary (LDA , art. 13) , which it is not acquitted (CPC , art. 333, II ) , “concluded the judge. The company tried to argue that the case, apply the provisions of Article 48 of the Copyright Law, which states: “The works permanently located in public places may be freely represented through paintings, drawings, photographs and audiovisual procedures “. However, for the judge, the article does not serve the case, since none of the six photographs refers to art works located permanently in the street or square. Given the facts, the judge ordered the company to pay R$ 9000 (Nine thousand reais) for property damage, “as the author charges on average between R$ 1000 (one thousand reais) and R$ 2000 (two thousand reais) by photo for use of websites in images.” Already for moral damages, for not giving credit to the author of the photos, the judge ordered the company to pay R$ 6000 (six thousand reais). Dr. Raphael Lemos Maia

The art of storytelling is something as human as humanity itself. Fundamental element of formation of cultures over the years, “telling” stories (or storytelling) is something from the dawn of humanity, when the Cro-Magnon man began the practice of rock art, relying on drawings – and quite rudimentary way – the facts experienced in prehistoric every day. Surpassing the pre-history, storytelling won ancient civilizations (such as the Aztecs, Egyptians, Greeks and Romans) and even religious institutions, as a way to promote the entertainment and education, as well as to preserve the history and culture of peoples and nations. And, as it should be, the practice of storytelling reached modern civilization with the same force that had in the past. Storytelling, however, does not always mean telling the truth: we know that many stories are based on myths, legends, assumptions, rumors and inspirations with one or more bits of fantasy and fiction – as in the good old Santa Claus, an character inspired on St. Nicholas. As the storytelling, this kind of story also reached modern civilization, weighing up, however, which is increasingly difficult to instill fantasies in the human imagination, because of the ease to “unmask” such stories in modern times, by seeking for information on the Internet. But still, there are people and especially companies increasingly engaged in such practices, but with a very different view of our ancestors: marketing. The storytelling as a marketing tool has been increasingly explored around the world and, in Brazil, a leading market in the production of advertising, this practice has grown considerably. This is because, as demonstrated by the analysis of marketing doctrine, storytelling is a way to retain consumers by “telling” a story that establishes an identification connection between a company, a brand, a product or a service and its consumer, reinforcing branding. This story, if told properly, creates an emotional bond with the consumer that enhances engagement and the valuation of basic elements of his decision, as best price, best service, etc. That is, tell the right story for your target audience can increase sales, bring new customers and retain existing ones – all that any company wants. It happens that, being a marketing tool, invariably the storytelling business is viewed as an advertising artifice for commercial purposes (profit) directly or indirectly, subject to self-regulation of the industry and consumer protection laws. With the growing interest in storytelling by advertising agencies and companies, many have been devoted to this practice in a risky way, making use of fanciful stories to build concepts to products and services, as well to approach the consumer, as reported regarding Diletto (from the ice cream industry) and Do Bem (non-alcoholic beverage industry), being represented by the National Council of Self-Regulation (CONAR). For those who know these companies, it is clear that their marketing is state of the art: while Diletto produces fine popsicles and boasts freezers (and even stores) with classic and fancy design, Do Bem stands out on the grocery shelf with their juices and box of teas with natural-looking. The storytelling of them makes the same way, and while Diletto account that its recipes are based on some of the Italian immigrant fictionally named as Nonno Vittorio (an alter ego of the grandfather of the founder of the brand), Do Bem that its fruits come from the farm of Mr. Francesco, one of the company’s suppliers. Without going into the truth of such stories, it is worthy to say that the Brazilian Code of Advertising Sector Self-Regulation provides that “every advertisement should be respectful and conform to the laws of the country; must also be honest and true “and that provides that description and claims must contain a true and verifiable presentation, in the same sense of the Brazilian Consumer Law. Therefore, if the storytelling is fictitious, a disclaimer shall be provided to state stating that it is a fictional story or at least fiction elements were incorporated to enhance the story. All this in order to prevent responsibilities and avoid proceedings before CONAR and even in the State Courts, which may be too costly. And even the storytelling is true, it is recommended that the company keep records and supporting documents to prove the story told is a true story, including for prompt response purposes since that the greatest damage that may occur, without doubt, is regarding the image of the company or the brand. A mistake in this sense can turn a lots of investments in “a once upon a time” a good marketing strategy. Anyway, is important to say that CONAR decisions cannot be enforced as State Court decisions can, but they are usually adopted by the punished.  

Conar investigates Diletto and Do Bem

São Paulo – CONAR (National Council for Advertising Self-Regulation) is investigating the Diletto companies (ice cream) and Do Bem (Well of juice). The cases are open on November 3, investigating the stories about brands, created by themselves – the “storytelling”. They cite the report published in the magazine Exame “Every company wants to have a good story. Some are lies,” the journalist Ana Luiza Leal. Consumers complain that there is information on packages and in advertisements that are not true. The Diletto says, for example, that the popsicles brand born with Vittorio Scabin, grandfather of the founder of the brand. They say he manufactured ice cream in Italy and came to Brazil to escape the Second World War. But as the Review report shows, the one Nonno Vittorio never existed. “I recognize that I may have gone too far in history,” said Leandro Scabin, founder of the company. This technique to create or disseminate stories involving the company and the brand is known as “storytelling”. Narratives create humanized tones for brands, unmoved consumers, promote values – so they stand out among so many competitors in the market. From Do Bem is also being investigated for their stories. The company says that oranges are baked and come, for example, the lord of the farm Francesco, the interior of São Paulo. Many consumers identify with the “organic” and “family” brand. “Eco-friendly”. The Exame magazine shows, however, that giants like Brazil Citrus provide oranges to Do Well – and also for several other companies in the industry. Consumers in this case, claim that advertising is misleading, because it seems that small farmers are being directly benefit from Do Bem. Diletto and Do Bem will be notified and will have ten days to submit their defenses, which must be judged in the meeting of December 11. If the result is positive for the consumer, both shall be notified to “recommendations” to suit. For example, change packaging and in marketing.

Although slogans are valuable tools for marketing and advertising purposes and to enhance the selling power of services and products, these are fragile elements according to the Brazilian Law, since no person is entitled to get exclusivity on them. The Brazilian Intellectual Property Law is quite clear by listing the cases in which certain expressions (including slogans) cannot be registered as a trademark, which includes slogans: the section VII of article 124 provides that “signs or expressions used only as a means of advertising.” cannot be registered. This is the main point of the dispute between AMBEV (which uses the slogan “Brahma, the number 1” for one of its most popular products) and Der Braumeister (which uses the institutional slogan “brewery number 1 of São Paulo”) and is valid to any and all terms used to qualify a product and/or service for marketing purposes. In this sense, it is worthy to say that there are reservations: despite the verbal elements of a slogan cannot be protected itself, it is possible to obtain trademark protection to a slogan with the addition of figurative elements, stylized fonts or any other feature that turns the slogan into a sufficiently distinctive trademark. However, the granting of the registration will not prevent competitors or any third parties to use the word elements of the brand. The protection granted by the registration is regarding the use of visual and aesthetic elements equal or similar.

STJ denies AMBEV exclusivity of “Number 1” expression for Brahma Beer

The Third Class of the Superior Court of Justice decided that the Brewery Der Braumeister Paulista can continue to use the expression “number 1” in your product. By majority, the court considered that the company had not the intention to usurp the clientele of beer Brahma, Ambev. The minister Paul of Tarsus Sanseverino, the words “Number 1” acts as a qualifying product or service, like “the best, the preferred, the most consumed” – expressions that “do not submit the record to be of use common, especially when there are distinguished by special graphic characters. ” Ambev filed a compensation lawsuit against Der Braumeister alleging unfair competition because of the slogan “brewery number 1 of São Paulo”. Said that there was misappropriation of the term “number 1”, which would be the exclusive holder, it identifies your product – Brahma beer – nationwide. Also pointed out the misuse logo similar to its presentation of the competing product. According to AmBev, the expressions are registered “Brahma Chopp, beer number 1” (since 1993) and “Brahma, the number 1” (since 1992), and the sign for the brand Brahma Chopp and its constituent elements (since 1992). Logos The trial court rejected the request. Found that the evidence indicated by Ambev, by themselves, do not reveal confusion between the names. “The arrangement of names is quite different, and the wheat ears design is made so as not to induce similarity, it can’t be concluded that the mere inclusion of such a design is understood as a violation of industrial property rights,” said the sentence. The São Paulo Court modified the decision to conclude that the Brewery Der Braumeister presenting your product with elements similar to the logo of Brahma and his promotional material brings a slogan that also blends with the advertising of Ambev. In the STJ, the Der Braumeister maintained that the “number 1” is generic or public domain, and that Ambev took the risk to use in their campaigns an expression which, alone, no one can appropriate. She rejected the accusation of unfair competition, claiming that has long used the unopposed expression of Ambev and the products coexist peacefully. Ambev said that despite the signs and advertising expressions no longer be record object, still receive protection based on Industrial Property Law.   Advertising Expression In his opinion, the Sanseverino minister pointed out that the similarity verified by TJ-SP with regard to logos is not strong enough to constitute unfair competition, fireworks to customers of ownership or confusion of reason in the consumer market. According to the minister, pointed identity merely a red band, which is not enough to cause confusion, or because the names are different, either because the Der Braumeister is a beer hall/restaurant and not just a producer of beverages. As for the “number 1” expression, Sanseverino stressed that the Law 9.279 / 1996, when listing the situations not subject to the possibility of registration as a trademark, expressly mentioned advertising expressions. “The phrase ‘beer number 1’ is nothing more than merely advertising expression, widely used by Brahma, true, but now is not subject to registration and thus does not allow its use to be made unique,” he concluded. The rapporteur also said that the advertising spread by Der Braumeister expression “brewery number 1 of São Paulo”, because it is service that includes the branch of food / restaurant, does not seek to monopolize unfairly clientele of Brahma. With information from STJ Press Office. Dra. Paula Ajzen