Leite de Rosas obtains a favourable decision against the undue use of its trademark

Leite de Rosas obtains a favourable decision against the undue use of its trademark

Positioning and maintaining a trademark or the distinctive whole of a product or service in the market is not a simple, quick or low-cost task. For a company to position its product and trademark that it bears in the market, a distinctive and unique relationship between the two must be established, as well as a connection with consumers through their perception of the information, qualities and other elements passed by the trademark and/or by the distinctive whole of that product or service. And, usually, this perceptive link is created through investment in advertising and continued use of this distinctive sign, causing this relationship to be fixed in the minds of consumers. In semiology applied to trademarks[1], it is said that a perception must be created between the signifier[2], the signified[3] and the referent[4] which fixes this triadic relationship[5] (trademark, brand image and product/service) in consumers’ minds.

Not infrequently, competitors, in their eagerness to build this relationship between a new product or service/trademark/manner of perception by consumers, choose to shorten the time and investment in creating this relationship, by approximating symbols and references already established in the market into which it is entering.

In this context, the reproduction or imitation, without permission, by a competitor, of elements protected by its competitor’s trademarks, in such a manner that this use may induce confusion or association among consumers, constitutes trademark infringement. Committing this act with the aim of benefiting the positioning of its product and its trademark on the market, in order to approximate its trademark to the reputational aspects of that competitor’s trademark, in addition to generating undue economic gains from the possibility of confusion or association, dilutes the competitor’s trademark[6]. In cases where the reproduction or imitation is not limited to the aspects protected by the trademark but extends to other distinctive elements of the product’s trade dress[7], in addition to trademark infringement, the use of these elements is prohibited, when capable of causing confusion, through the institute of unfair competition. The protection of the distinctive elements of the product’s trade dress is independent of protection against infringement of the trademark itself but may occur concomitantly (and as an aggravating element of the unlawful act) in relation to the trademark’s reproduction or imitation.

This is precisely the situation in this case: in the decision handed down on 02 December 2022, by Judge Alexandre Carvalho Mesquita of the 1st Business District Court at the Rio de Janeiro Court of Justice, in the case records of lawsuit no. 0014515-37.2020.8.19.0001. On this occasion, “Leite de Rosas” [Rose Milk] won a lawsuit against the undue use of its trademark and trade dress. It was therefore decided that the company responsible for the product “Leite de Arroz e Rosas” [Rice and Rose Milk], the company Master Line do Brasil LTDA (Master Line), must definitively refrain from using the expression “Leite de Arroz e Rosas” [Rice and Rose Milk] and/or or variations thereof, as well as making use of the combination of pink and white colours in the trademark and on the packaging for its product, adopting a different trademark and combination of colours to identify the products it sells and displays for sale, so that consumers  are no longer misled by the similarity with the trademark and packaging for the product “Leite de Rosas” [Rose Milk], owned by the company Etne RJ Participações S/A (Etne).

This is because the product in question, “Leite de Arroz e Rosas” [Rice and Rose Milk], had been using the mentioned expression with the same combination of white and pink colours, with stylised lettering assuming a nostalgic character, and the calligraphy was extremely similar to the one created especially for the brand and product “Leite de Rosas” [Rose Milk]. Moreover, the packaging for the product “Leite de Arroz e Rosas” [Rice and Rose Milk], in addition to also using the same calligraphy and combination of colours used on the packaging for “Leite de Rosas” [Rose Milk], reproduced other details such as the image of petals and a rose, placed on a shiny and white surface, and had no association with the image of rice:

In addition to the identifying elements above, a series of characteristics of the two products contributed to the possibility of confusion, among them, the target public, the identicalness of the marketing channels for the products (supermarkets, drugstores, pharmacies) and the lack of specialisation required for the purchase, since the less specialised the consumer, the greater the risk of confusion or association. Other relevant facts indicated were (i) the packaging used by the product “Leite de Arroz e Rosas” [Rice and Rose Milk], which was extremely similar to the packaging used by “Leite de Roses” [Rose Milk] in the 1970s, that is, the body of the package in white with pink letters and (ii) that the products in question were being conveyed through other packaging (“roll-on”), adding to the occurrence of conflict and confusion among consumers:

The role of the expert investigation in the case was fundamental for the establishment of these facts, acts and handling of the issue[8]. A court without the aid of a technical expert investigation could disregard crucial issues, such as the fact that they are off-the-shelf products or “over the counter”, that they are a daily use product and are sold to consumers, in general, who pay less attention.

In this context, in his report, the expert noted that, although the owner of the trademark and product “Leite de Rosas” [Rose Milk] does not have exclusivity to the expression “Leite de” or “Rosas” when used separately, the way in which the product “Leite de Arroz e Rosas” [Rice and Rose Milk] is presented represents trademark infringement through reproduction with addition. With respect to unfair competition, the expert clarified that the violation was “in the trade dress, that is, in the combination that makes up its entire visual identity: the product nomenclature, combination of pink and white colours, similar spelling and phonetics, the image of rose petals and the flower itself over milk”. The expert also explained that “because they are OTC products (“Over The Counter” – off the shelf), for daily use and affordable consumption, it is assumed that less attention is paid in the act of consumption.

Accepting, in full, the expert report, the Court was of the view that the coexistence of the trademarks in question was “likely to cause confusion among consumers and losses to the owner of the violated mark, thus noting the constitution of unfair competition by the defendant”, also indicating that the filing of the lawsuit was a “regular exercise of a right”. Thus, on the merits, the Court granted the main claim by the company Etne and rejected the counterclaim by the company Master Line.

In terms of compensation, Master Line was sentenced to pay compensation for material damages, pursuant to Articles 186, 884 and 927 of the Civil Code and 208 and 209 of Industrial Property Law no. 9,279/96, the value of which would be calculated at the award setting stage, in accordance with the criteria of Article 210 of the same law, as well as to pay compensation for moral damages, in the emblematic amount of BRL50,000.00 (fifty thousand Brazilian reais).

Although subject to an appeal, it is noted that the decision shows the maturity of the Brazilian Judiciary when dealing with controversies involving Industrial Property rights, providing security as to the reasonableness of the positions taken in the face of disputes that may arise from these rights. More precisely, the ruling favours the protection of trademarks and trade dress, for the benefit of their real creators/owners, sending the message that acts, even sophisticated ones, of trademark dilution and unfair competition will not be tolerated in the market.

[1] Further insights into semiology applied to trademark see: Denis Borges Barbosa. Proteção das Marcas [Protection of Trademarks]. Rio de Janeiro: Lumens Juris, 2008 and BEEBE, Barton. “The Semiotic Analysis Of Trademark Law”, 622 51 UCLA Law Review, 621 (2004)

[2] It is the representation of the trademark itself, in its material form – in its word, figurative, composite and three-dimensional aspects, etc.

[3] It is the interpretation that consumers make of the signifier. It is the content associated with the trademark itself, the qualities that it conveys or that are perceived by consumers, such as, for example, values, emotions and feelings. Also identified by the brand image.

[4] Product or service designated by the trademark. The object to which the trademark refers and which is behind the symbolic representation of the trademark.

[5] PEIRCE, Charles Sanders (1839-1934). Semiótica [Semiotics]. São Paulo: Editora Perspectiva, 3rd edition, 2005.

[6] “Dilution of a trademark is an offense to the integrity of a distinctive sign, whether moral or material, by an agent that does not necessarily compete with the owner of the sign. The effect of brand dilution is the decrease in the selling power of the distinctive sign, either by harming its uniqueness or by offending its reputation.” Filipe Fonteles Cabral. Trademark Dilution: A defensive or offesive theory? Available at: https://ids.org.br/diluicao-de-marca-uma-teoria-defensiva-ou-ofensiva/#:~:text=Dilui%C3%A7%C3%A3o%20de%20marca%20%C3%A9%20uma,pela%20ofensa%20%C3%A0%20sua%20reputa%C3%A7%C3%A3o.

[7] Trade dress is the set of visual and sensory elements through which a product or service is presented to consumers and the purpose of which is to distinguish these products or services from those of other competitors. On the subject, see: SOARES, Tinoco. Trade dress e/ou Conjunto imagem [Trade dress]. ABPI Magazine, no. 15, March-April, 1995.

[8] Position already established by the Superior Court of Justice (STJ) in the judgment of Special Appeal (REsp) 1.353.451/Minas Gerais (MG), “the confusion that constitutes unfair competition is a matter of fact, subject to technical examination, in order to ascertain the market in which the product and service is inserted and the result of the entry of a new product in the competition, in order to achieve the unpredictability of anticompetitive conduct in the eyes of the market”.