Trade Dress Protection in the Brazilian System
Your business’ distinctive signs, be it the trademark, the colors, and font of the websites, the packaging all play an important role in making sure that customers can easily identify your products. However, not all the elements that fall under the category of “brand” and that make a product or a service distinctive and characteristic, receive the same degree of protection under Brazilian law. Indeed, while trademarks enjoy a pervasive regulation, the same is not true of the so-called “trade dress”. Trade dress refers to the visual appearance of a product or its packaging or even the atmosphere or design of a shop or a business. While trade dress is not mentioned in the Brazilian law, it is true that it has started to be widely recognized by the legal writings and by the case law; and although the Brazilian IP law doesn’t provide expressly for the institute, the Courts have interpreted the norms on unfair competition so to extend them to the relatively new phenomenon of trade dress.
The Trade Dress Protection in the Brazilian Law
Article 5, subsection XXIX of the Brazilian Constitution states that “The law shall assure inventors of industrial inventions a temporary privilege for their use, as well as the protection of industrial creations, the ownership of trademarks, company names and other distinctive signs, taking into account social interests and the technological and economic development of the Country”.
Therefore, not only the trademarks but all the signs that are likely to identify and differentiate a company and its products are worthy of protection. The trade dress, being a set of visual and sensorial features of a product or a place, that gives a particular “look and feel”, definitely falls under the category of “distinctive signs” as provided by the Constitution.
Moreover, the Brazilian Intellectual Property Law, at the art.209, recognises the right to recover damages against “acts of unfair competition not set forth in this Law, but that tend to prejudice another person’s reputation or business, create confusion among commercial or industrial establishments or service providers, or among the products and services placed on the market.”
It seems more than legitimate to imply that the “trade dress”, although not expressly mentioned in the law, deserves a certain degree of protection.
Trade Dress Protection in the Case Law
In 2006, in one of the first trade dress cases, the companies Procter & Gamble, Boehringer Ingelheim and Bayer filed separate lawsuits against EMS for infringing the trade sets of the products Syrup 44E Vick, Buscopan Compound and Aspirin, respectively.
The plaintiff asked for preliminary injunctions, that were granted because the court found that there was “unequivocal evidence” of trade sets infringement.
More recently, the beer manufacturer Duvel brought an action against the Brazilian company Cervio Comercio e indústroa de Bebidas Ltda, claiming infringement of the trade dress of the notorious Duvel beer, in particular for some elements of the packaging and the label, that, taken together, were likely to induce the customers into confusion. The 7th Trial Court of the city of Rio de Janeiro evaluated the degree of distinctiveness of the infringed trade dress, the coexistence of the products in the same market, the awareness of the infringer and the ability of the average customer to differentiate between the two products, concluding in favour of Duvel. The case is particularly interesting because the Court has declared a series of explicit and detailed requirements for identifying the trade dress infringement.