Injunction Against Generic Medicine’s Confusingly Similar Trade Dress Upheld

The Fourth Panel of the Court of Appeals of the State of São Paulo recently upheld in part an injunction that required generic producer EMS SA to modify the labels of its generic medicines, which were considered confusingly similar to the trade dress of medicines sold under the trademarks BUSCOPAN and MUSCOSOLVAN. The unanimous decision, issued September 8, 2005, upheld in part an injunction granted by the Sixth Civil Court of the City of São Bernardo do Campo in favor of several subsidiaries of Boehringer Ingelheim.

EMS argued that Law 9787/99, which regulates the commercialization of generic medicines, allows similarity between the trade dress of a generic product and its reference medicine and requires only that the generic’s label bear a yellow strip and the letter "G" to identify it as a generic product. EMS also argued that ANVISA (the Brazilian drug regulation agency) law and regulations allow use of the reference medicine’s trademark in publicity of the generic product and so the similarity of EMS’s labels was in accordance with the intention to allow consumers to quickly associate the generic product with the reference medicine.

The State Court of Appeals upheld the injunction. The court emphasized that while generic medicines are important, to permit them to copy trade dress would cause consumer confusion and undue benefit to the generic medicine’s producer-to the detriment of the reference medicine owner’s reputation and investment. Also, the fact that the medicines in question are sold over the counter without the need of a prescription enhances the chances of confusion.

The decision sets an important precedent in Brazil regarding the balance between allowing commercialization of generic medicines and avoiding consumer confusion and unfair competition.