by Rodrigo de Assis Torres
June 10, 2016
Trade dress is known as the range of characteristics that compose a certain product, package or façade, encompassing not only the trademark itself, but the colors, designs and unique elements that surround it.
In the United States of America, the trade dress protection was properly materialized in the Lanham Act, which is the first primary Federal trademark statute of law to treat the matter. However, Brazilian legal system so far lacks provisions in this respect.
Under Brazilian Law, more specifically the Industrial Property Law (Law nº 9,279/96), does not regulate trade dress protection , having therefore no indication as to scope of elements that composes products or packages. However, several important scholars and some Brazilian courts of law are overcoming this understanding and also providing opinions that trade dress should be protected under the scope of unfair competition repression (In Brazil, unfair competition is broadly repressed by article 195, III, of the Industrial Property Law).
For instance, attention should be drawn to a leading precedent of the Brazilian Superior Court of Justice, issued by Honorable Justice Marco Aurélio Bellizze in the Special Appeal nº 1.238.041, ruling that “the package (trade dress) constitutes an important element to attract the consumer and identify the products and its producers”.
Therefore, considering that the enforceability of trade dress protection under Brazilian unfair competition law is the subject matter of several pending appeals, the Superior Court of Justice issued a recent decision, in which Honorable Justice Luiz Felipe Salomão recognized the reiterative occurrence of the discussion and decided that the judgment of the Special Appeal nº 1.527.232, which specifically analyzes a product’s trade dress protection, will reach a final conclusion about the scope of trade dress protection and will affect all other similar pending Appeals.
The mechanism of repeated appeals solution already existed in the former Brazilian Civil Procedure Code, but gained still more strength in the New Code that came into force in March, 2015. In fact, the New Code in articles 926 and 927, provides that the courts of law must standardize their judgments and that the courts of Appeals must observe the decisions issued by the superior courts to establish their understandings.
This evolution can be seen as a certain approximation of the Brazilian civil law to the common law, since this judgment may affect all decisions that will be following taken by courts of law, providing a more definitive understanding about the subject and, consequently, taking away the unpredictability of decisions and improving the legal certainty.
It is also important to highlight that a precedent cannot be generally applied to all similar cases if it properly contains distinctive elements to the extent that it cannot serve as a paradigm.
After the merits of the mentioned Special Appeal is decided, the Brazilian legal system will face the possibility to standardize the treatment of trade dress lawsuits and take a new step in the protection of intellectual creations, what can encourage even more the production and attraction to business in Brazil.
1 Article 195 – A crime of unfair competition is committed by he who:
III – uses fraudulent means to divert, for his own or a third party’s benefit, another’s clientele;