The Significance of Expert Examination in Trade Dress Disputes: Insights from Brazilian Jurisprudence

Trade Dress Protection in Brazil: Jurisprudential Perspectives and Expert Examination

 

When it comes to trade dress, an institute not regulated by the Brazilian Industrial Property Law, it is the jurisdiction’s role to establish its protection, which is now a well-recognized matter commonly addressed by the Business Courts in central districts of Brazil.

 

However, assessing a potential trade dress violation is not straightforward due to the inherent subjectivity involved in defining the identity of a business, product, or brand without specific registration as a parameter.

 

 

In other words, trade dress encompasses a set of elements used by a business owner in their product or establishment, including visual, auditory, and even olfactory elements, often unregistrable, but which evoke the business’s identity in the consumer’s mind. Consequently, assessing its violation through a visual examination alone is insufficient, even for detecting potential infringements by third parties unrelated to the controversy.

 

Furthermore, establishing the factual existence of a trade dress, that is, the establishment of a set of elements in the consumer’s mind, is necessary before evaluating any potential infringement. This requires an analysis of market customs, which might be extrinsic to the evidence presented by the parties and beyond a judge’s knowledge.

 

For these reasons, the Brazilian Superior Court of Justice recognized the necessity of conducting expert examinations in cases of this nature. Such examinations serve to analyze the technical and market-related aspects surrounding the trade dress of the disputing parties.

 

In the judgment of Special Appeal No. 1,778,910 – SP, involving two leading Brazilian jam manufacturers, where an allegation of defense restriction was made due to the denial of the requested expert examination, Minister Maria Isabel Gallotti stated the following:

 

“The composite image is complex and composed of several elements. Given the lack of legal classification and the fact that it cannot be registered, the occurrence of imitation and the determination of unfair competition must be assessed on a case-by-case basis. Therefore, the assistance of an expert is essential to evaluate market aspects, consumer habits, advertising and marketing techniques, the level of attention of the average or typical consumer of the product in question, the time when the product was launched in the market, as well as other elements that contribute to the presentation of the product or service.” (translated).

 

This precedent is of utmost importance as it provides more consistency and legitimacy to judgments issued by the Courts responsible for handling such cases.

 

Nevertheless, the establishment of this jurisprudential understanding does not simplify the lawyer’s role in the proceedings, particularly concerning the management of the expert examination. Therefore, the assistance of a specialized law firm like Peduti Advogados, exclusively focused on Intellectual Property, Entertainment, and Digital Law services, is indispensable.

 

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Author: Enzo Toyoda Coppola e Cesar Peduti Filho, Peduti Advogados

Source: Apple tenta registrar imagens de marca na Suiça

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“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.”

 

The protection of the trade-dress in brazilian law

the protection of the trade-dress in brazilian law

Nowadays, companies no longer think only about the quality of their products and / or services, but also about the whole set of elements that form the company’s identity and differentiate it from competitors.

This “set” is called the trade-dress, which is the set of identifying elements of a company, product or service. It is, in short, the global set of external and aesthetic characteristics of the product, service or establishment able to individualize them.

What often happens is the copy or imitation of this set or even some elements that characterize the company’s product / service by competitors in order to confuse the consumer, alienating the clientele or even damaging the company’s reputation in the market.

How to proceed when your company is a victim of trade-dress violation?

In Brazil, protection for the trade dress itself is not provided for in specific legislation, the Brazilian legal diplomas being concerned exclusively with the protection of the individual recordable elements (like trademarks).

The jurisprudence, however, has been in charge of combating possible violations of the image set.

The protection of the trade-dress in brazilian law

This protection has been a guarantee based on Article 5, item XXIX, of the Brazilian Federal Constitution: 

“The law will grant authors of industrial inventions temporary privilege for their use, as well as protection for industrial creations, trademark ownership, company names and other distinctive signs, in view of the social interest and the technological and economic development of the country;”

In addition to constitutional protection, the defense of the institute has also caused the incidence of rules of the Civil Code, the Consumer and the Industrial Property Law (unfair competition).

The article 195, item III, of the Industrial Property Law defines unfair competition as a crime:

Article 195. A crime of unfair competition is committed by anyone who:

(…)

III – applies fraudulent means, to divert, for its own or someone else’s benefit, the clientele of others;

Brazilian jurisprudence has been acting mainly by applying unfair competition to cases involving trade-dress. A Judge at the Rio Grande do Sul Court of Justice once said “In addition to the loss of profit, the improper use of someone else’s trade dress can cause an impact on the trademark’s objective honor, which as a result of such action, has put the quality of your product to your customers, which can damage your good reputation in the market ”The central point for recognizing, in court, as an act of unfair competition the sale of products or services with a trade dress similar to that of others is the verification of the possibility of confusion that such conduct may generate for consumers, through the association product or service that is unfair to the original.

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Lawyer Author of the Comment: Laís Iamauchi de Araujo

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Headline:The protection of the trade-dress in brazilian law

“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.”