Brazil: False Association As An Element To Apply The Unfair Competition Doctrine

Last Updated: 1 July 2013
Article by Rodrigo De Assis Torres

Abstract: This article seeks to analyze a recent decision issued by the Civil State Court of Rio de Janeiro in the Interlocutory Appeal nº 0004394-31.2012.8.19.0000, that, while examining an ex parte injunction pleading formulated by Red Bull, recognized the likelihood of false association by consumers of products bearing considerable resemblances on their respective trade dresses. The decision addressed with precision the elements that lead the Reporting Judge to reverse the first level decision and grant the injunction based on the plausibility of the plaintiff's allegations.

Keywords: Industrial Property - Unfair Competition - False Association – Divert of Clientele - Trade Dress - Brand Dilution

(i) The Decision:

The decision referred to in this article was issued on the interlocutory appeal filed by Red Bull against the rejection of an injunction pleading, made before the lower court, requesting another energy drink manufacturer to stop importing, manufacturing and commercializing an alleged infringing product. According to Red Bull, the Defendant's product would copy the most distinctive elements of its energy drink "Red Bull", i.e., (i) the combination of colors "blue, silver and red" (ii) use of red letters in the spelling of the brand's name, (iii) the juxtaposition of the red element in the middle of the can, just like the famous energetic "Red Bull", and (iv) the prevalence and use of the color combination "blue and silver" in the package.

The decision, issued in the Interlocutory Appeal nº 0004394-31.2012.8.19.0000, spoke with notable precision about the illegal activity committed by the Defendant, consistent on acts of unfair competition. The Reporting Judge recognized that the Defendant, when using the same color combination and similar layout of the Plaintiff's packaging caused a clear confusion for consumers, as well as an undue association between the companies.

(ii) The likelihood of confusion issue, the secondary meaning of the color combination and the risk of dilution:

The likelihood of confusion is a classic element to depict an act of unfair competition, and it has been examined by scholars of good reputation such as the Professor Celso Delmanto:

"Establishing confusion with items or products of a competitor is undoubtedly the most repeated fraud applied to cause the misleading punished by this article. The unfair agent tries to imitate the extrinsic appearance of the competitor's product so that your product is presented similar to the eyes of consumers and they will buy it thinking it was the item of their competitor. The fraudulent means is here the product itself, that is, the mistake is in re ipsa."

As a general rule, any conduct able to mislead consumers as to the source of products and/or services or even to the existence of any relationship between the companies may be found as unfair competition in view of Articles 195, III, and 209 of the Brazilian Industrial Property Law and Article 10 bis (3) of the Paris Union Convention, which read as follows:

Art. 195. Commits crime of unfair competition who:

III - employs fraudulent means to divert someone else's clientele, in one's own benefit or that of another.

Art. 209. The aggrieved party is reserved the right to receive losses and damages to compensate for any harm caused by the violation of industrial property rights and acts of unfair competition not provided for in this Law, that tend to be harmful to the reputation or business of others and to create confusion among commercial and industrial establishments or renderers of services, or among products and services put on the market.

Article 10 bis.

(3) The following in particular shall be prohibited:

1. all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;

The most important issues to be considered in such cases are (i) if the "trade dress" is eligible to protection as being inherently distinctive or by having acquired secondary meaning; and, more importantly, (ii) if the reproduction or imitation of the "trade dress" is able to mislead consumers.

In the case at hand, when using a package and label that extract the essence of the distinctive elements from the famous energetic "Red Bull", the Defendant's product came too close to the plaintiff's product, taking advantage of its fame and prestige within the beverage market.

At this point, the decision was also grounded on a specific field of the unfair competition entitled "free riding" that is found against acts directed to the unjust enrichment of a company by the misuse of another's reputation and work.

The fame of the RED BULL mark and product was also expressly mentioned by the judge and it has been taken into consideration in this decision particularly regarding the risk of dilution, that is, a famous sign (registered or not) losing its attraction power before consumers due to an undue use made by third parties.

It is equally important to highlight that the color combination of the Red Bull product (blue and silver) has acquired a secondary meaning due to its use and large amount of money invested in the divulgation of the product. The judge particularly recognized this secondary meaning while considering the result of several surveys performed around the world that clearly showed the degree of acknowledgment of the consumers of such combination when related to beverages.

(iii) The False Association:

Another central argument used on the decision and which can be considered an "innovation" to court orders usually issued by Brazilian Courts, is the recognition of the likelihood of false association if the products "Red Bull" and Defendant's energy drink are examined together.

Here is the part of the decision that addressed this issue:

"It needed protection because the differences between the packages are not able to differentiate the products in the same market segment, being the consumer, inattentive, lead to think that it is the same energy drink or deduce that this is another product from the same manufacturer."

The Reporting Judge of 18th Civil Court of Rio de Janeiro, also found that consumers may buy a product thinking that it may come from another player of this market, thus, the judge understood that there is a clear possibility of acquiring a product that may not bear the same quality of the Red Bull product and the consumer, in such case, may associate the lack of quality to Red Bull in view of the similarities of the packages.

On this theme, the celebrated scholar Denis Borges Barbosa teaches precisely:

"The association which is spoken, in contrast to the confusion, did not apply over products or services, but on the qualitative elements of the origin of these products or services. The counterfeiter, through the use of symbolic elements, seeks to take advantage of the image created by the innovator."

"This does not happen by mistake between one product and another, leading to a choice that was not even rational, but induced error. The association is through the illegal use of the image built around the product, or other significant elements."

Thus, although bearing some differences, it has been decided that the defendant would probably take advantage of the huge investments made by Red Bull to promote its brand and trade dress to enhance the success and acceptability of his product.

(iv) Conclusion:

The decision here analyzed represents an interesting precedent of the State Courts of Rio de Janeiro to begin to see other ways to characterize unfair competition, going beyond the traditional divert of clientele by likelihood of confusion.

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

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

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
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
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 you may opt out by clicking here

    Terms & Conditions and Privacy Statement (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

    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’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.


    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.


    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.

    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 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.


    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.


    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.


    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.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    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

    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

    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

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

    By clicking Register you state you have read and agree to our Terms and Conditions