Brazil: Trade Dress Protection in Brazil

Last Updated: 29 September 2010
Article by Rodrigo Borges Carneiro and Gustavo Piva De Andrade

While there is extensive case law protecting trade dress under the Unfair Competition Law, protection under trademark or industrial design law should be sought where possible

Brazilian law does not specifically protect trade dress. However, there are statutory provisions and legal remedies available through which trade dress protection can be claimed. In addition, there is an extensive body of case law protecting trade dress under the unfair competition statute. Moreover, provided that product configurations, shapes, colour combinations, labels or distinctive designs and décors of businesses meet the requirements of registrability and are duly registered as trademarks, trade dress can also be protected against infringement under trademark law.

Three-dimensional marks (3D) are currently allowed in Brazil. The requirement of direct visual perception is not a problem and the National Institute of Industrial Property has been granting registrations for 3D marks for some time. Applications must contain different views (ie, front, back, lower and side views), as well as a perspective of the mark. As with any other mark, 3D signs must be distinctive. Thus, necessary, common or usual shapes of a product or its packaging are not registrable. Shapes that cannot be disassociated from a technical effect are also barred from registration.

In Brazil, packages and product configurations have in the past been registered as 3D marks. As use is not a requirement for obtaining a registration, distinctiveness must be analyzed without requesting proof of secondary meaning, which is a difficult task for examiners.

Conflicts between 3D marks and industrial design registrations are possible. Because of this, the law specifically prohibits the registration of industrial designs owned by third parties as 3D marks.

Three-dimensional marks can indirectly protect aspects of a package or product that are 'tactile' in their nature (eg, engravings and textures). Further, they can also be used to protect decorative elements of commercial establishments, such as restaurants, banks and gas stations.

Even if a product's trade dress is not registrable as a trademark, protection is still possible. Brazilian case law strongly upholds the protection of certain distinctive features of products or businesses that, although not registrable, function as source identifiers through consistent commercial use. The courts extensively protect non-functional and distinctive products or business features based on the Unfair Competition Law. The Industrial Property Law (9279/96) lists a series of practices that are outlawed when defining 'unfair competition'. In particular, Article 195(III) establishes that it is a crime for someone to "use fraudulent means to divert, for their own or a third party's benefit, a competitor's clientele".

Although Article 195(III) defines a crime, most decisions protecting unregistered trade dress come from the civil courts. Such decisions are based on Article 207 of the Industrial Property Law, which provides that independent of criminal proceedings, the injured party may file a civil action to enjoin the unfair practice. Additionally, under Article 209 the injured party reserves the right to receive damages in compensation for crimes caused by acts of unfair competition that damage its reputation or business, or cause confusion between commercial or industrial establishments or providers of services or between products and services placed on the market. The available remedies range from preliminary and permanent injunctions and restraining orders to actual or statutory damages.

These provisions have been the basis for several civil cases protecting product configurations, shapes, labels and exterior and interior business designs and décors. The test applied by the courts is that the party seeking protection must prove that the features have been used consistently in the local market so that they have become distinctive, and that their adoption by a competitor is likely to cause confusion or divert clients away from it. The features must be distinctive and non-functional, and must have achieved a role as a source identifier. The senior user of the trade dress need not prove actual confusion, since the law also applies to likelihood of confusion.

One of the most important cases in trade dress protection in Brazil involved the décor of a chain of shoe stores. The plaintiff, Calipso Bay Arrendamento de Marcas Ltda, owns a well-known chain of shoe stores, known under the registered mark MR CAT. Calipso has developed a characteristic interior and exterior trade dress with which to identify its stores. The defendant, VIPI Modas, Ltda, which was licensed to use the mark MR FOOT (owned by Calçados Pina Ltda), launched a competing shoe store whose design and décor were similar to those of MR CAT. The Court of Appeals of the State of Goiás upheld a decision by the Civil Court of Goiânia that found VIPI guilty of unfair competition under the Industrial Property Law by copying Calipso's interior and exterior design and décor.

Despite its finding that the trademark MR CAT had not been infringed by MR FOOT, the court determined that VIPI had begun to use the same architectural design as Calipso and the same packaging and presentation for its shoes. The court held that the concept of unfair competition is sufficiently extensive to include all acts of a competitor that are designed to divert fraudulently to it customers from the other party. One of the judges noted that VIPI replicated Calipso's trade dress in a way that was likely to cause confusion, in spite of the fact that the two companies' trademarks are dissimilar.

The Brazilian courts have handled numerous trade dress cases in the past years in relation to pharmaceuticals. Most disputes involve generic manufacturers adopting a more aggressive position towards the imitation of reference medications' trade dress. This policy naturally conflicts with the interests of the brand-name drug companies.

A pharmaceutical trade dress can either be inherently distinctive or have acquired distinctiveness through use. Although the Brazilian Trademark Office is officially reluctant to apply the 'secondary meaning' doctrine, some courts have already recognized the concept of acquired distinctiveness and allowed the registration of descriptive signs and shapes that became distinctive through use. For instance, no one is likely to challenge the statement that the blue diamond shape of Viagra tablets has acquired distinctiveness and deserves protection under the law.

As regards confusion, Brazilian Law prohibits not only actual confusion, but also the likelihood of confusion between products. Thus, although evidence of actual confusion might strengthen the plaintiff's position, establishing the likelihood of confusion is sufficient to prevail in a pharmaceutical trade dress dispute.

The most common type of confusion occurs when a later entrant to the market tries to misrepresent its product as being the product of a better-known competitor. This is a sort of passing off and the Brazilian courts have already held it illegal in many precedents involving pharmaceutical products. Case law also encompasses situations where the junior product is not passed off as the branded drug, but there is either confusion as to its source or simply na unconscious association between the products. In such cases, the courts have acknowledged that although the generic drug is unlikely to be mistaken for the reference drug, the unauthorized imitation should be prohibited as it is illegally free riding on the competitor's goodwill and reputation. In Bristol-Myers v EMS (2007), a case involving the appearance of Bristol Myers's DERMODEX skin ointment, the court held:

"The consumer will have no doubt that the medication is generic, but may be unsure whether or not it is a generic drug manufactured by the laboratory he [or she] trusts or perhaps may feel familiarity with the product simply because it looks like the reference product... Generating confusion as to source in practice causes fraudulent attraction of consumers, because the defendant is taking advantage of the marketing investments made by the plaintiffs, thus achieving a favourable perception in... consumers' minds (aspects such as trust, tradition and market leadership)."

In Wyeth v EMS (2007), the Rio de Janeiro Court of Appeals upheld a preliminary injunction against an infringing product, noting that "the packaging is a marketing tool and constitutes the group of colours and words selected by professionals to set a specific image in the consumers' minds; it is usually built over years of advertisement, so generic medications may not use a trade dress with the same overall impression with similar colours, fonts and details". Thus, the likelihood of confusion in pharma trade dress disputes should be examined not only from the passing off perspective, but also with regard to confusion as to source and other unfair advantages that the unauthorized use of the lookalike trade dress might present.

Generic manufacturers often argue in trade dress disputes that the use of similar packaging is beneficial to consumers, since it better indicates to the public the link between the generic medication and the corresponding brand-name drug. Generic manufacturers rely on the Generics Act 1999 and claim that the statute authorizes the use of similar characteristics in the packaging of generic drugs, creating a sort of exemption from trade dress rights.

This argument is unsupportable because the Generics Act merely regulates the coexistence of reference medications and their generic versions, allowing third parties to manufacture drugs whose patents have expired. No section of the statute authorizes generic manufacturers to copy or reproduce the overall appearance of the reference medications. The court in Bristol-Myers v EMS examined this issue and pointed out that "lawmakers sought to establish a peaceful coexistence between the legal systems that regulate IP rights and the commercialization of generic drugs. This measure is in line with the Brazilian Constitution, which assures citizens the social right of health, but also protects IP rights. The Generics Act expressly provides exceptions for situations where patent rights have expired. Since it did not do so with regard to the other industrial property rights - trademarks, industrial designs and other distinctive signs - we conclude that these rights remain fully in force". Thus, there is no conflict between the Generics Act and the Industrial Property Law.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.