Rio de Janeiro State Court rules on dispute between jewelers over the use of Victorian star in jewelry collection

Rio de Janeiro State Court rules on dispute between jewelers over the use of Victorian star in jewelry collection

Last month, the 6th Chamber of Public Law of the Rio de Janeiro Court of Justice handed down a ruling in a legal dispute between two famous jewelry stores involving Victorian star-shaped jewelry. Unanimously, the court held that the collection launched by the defendant jeweler did not infringe the plaintiff’s trademarks and that, likewise, there can be no exclusive protection over the use of the designs of such stars on pieces of jewelry, since this is a secular symbol, universally known and widely disseminated.

In the lawsuit, the plaintiff requested that the defendant jewelry company cease marketing and manufacturing jewelry pieces from its “Stars Collection” that feature the Victorian star design, as well as the use of the term “Stars” to designate the aforementioned collection or any jewelry collection; and that it remove all advertisements for the collection, in any and all media. It also asked for the seizure of any jewelry still in stock, designating the plaintiff as its custodian. The plaintiff claimed that such uses infringed its word mark, “Stern Star”, its figurative mark of a Victorian star, as well as its copyright on the design of its Victorian star-shaped jewelry.

Thus, an expert report concluded that “the collections of both parties are inspired by the Victorian star, but that there are sufficient elements to distinguish their overall impressions, even if there is similarity in the set of strategies adopted by the defendants and the plaintiff. It pointed out, however, that the communication strategy adopted by the defendant brought the defendant’s collection closer to the plaintiff’s collection.

The lower court ruling dismissed the claim in part and ruled that the defendant jewelry company could market and manufacture the “Stars Collection” pieces, as well as use the term “Stars” in the name of its collection, since there was no infringement of the plaintiff’s trademarks, as well as any plagiarism, counterfeiting or fraud in relation to the jewelry pieces manufactured by the defendant. The ruling stated that the plaintiff did not have exclusivity over the use of the term “Stars” or the use of the Victorian star design.  However, the ruling ordered the defendant to remove all advertisements for its “stars collection”, in any and all media, and henceforth to refrain from making and contracting new advertisements for said collection, unless it clearly differentiated between the plaintiff’s collections and its own, under penalty of a daily fine of R$10,000.00 (ten thousand reais).

On appeal, all parties appealed. The plaintiff reiterated that there had been an offense against its word and figurative marks, which are well known in the jewelry segment. It argued that the defendant practiced a communication strategy of “conscious parallelism” to refer its pieces to the identity of the plaintiff’s brand, as well as promoting a false association between the two.  The defendant asked for the judgment to be annulled, since it argued that such “strategies” or “communication pieces” had not been questioned by the plaintiff, so that the judgment would be extra petita.

In the judgment, with regard to the defendant’s appeal, the rapporteur of the case understood that the request for nullity of the judgment is not appropriate, since the plaintiff sought a ban on the sale of the pieces, which also covers the way in which the collection at issue was disseminated, through the advertising materials adopted. Regarding the judgment on the plaintiff’s appeal, the rapporteur concluded that the litigants reached different segments of the market and that their customers were not likely to be confused. He also noted that although the plaintiff repeatedly used stars in its garments and had registered a figurative trademark in the shape of a star, this does not mean that it can prevent other companies in the market from using the symbol. According to the judge, “the use of stars by other jewelry stores is an inherent fact of broad competition, especially since it is a symbol that is widely used in various market segments”. Nevertheless, the judgment upheld the defendant’s order to differentiate the collections in any and all means of communication.

The judgment can be consulted via the link: Apelação nº 0031810-92.2017.8.19.0001

Note: For quick release, this English version is provided by automated translation without human review.