by Elisabeth Siemsen do Amaral
May 01, 2005
The Brazilian legislation does not specifically regulate the protection of "trade dress." However, there are statutory provisions and legal remedies available to claim trade dress protection, and there is an extensive body of case law protecting trade dress under the unfair competition statute.
lf product configurations, shapes, color combinations, labels or distinctive designs and décors of businesses meet registrability requirements and are duly registered as trademarks, all remedies are available to enjoin trademark infringement under the trademark law.
Brazilian case law strongly upholds the protection of certain distinctive features of products or businesses that, although unregistered, function as source identifiers through consistent commercial use. The courts extensively protec non functional and distinctive product or business features based on the law against unfair competition. The Brazilian Industrial Property Law No. 9279/96 lists a series of practices that are outlawed when defining unfair competition. In particular, under Article 195, Ill, it is a crime for someone to "use fraudulent means to divert, for their own or a third party’s benefit, a competitor’s clientele." The penalty for conviction of the crime is a jail sentence, from three months to one year, plus fines.
Although Article 195,111 defines a crime, most decisions protecting unregistered trade dress come from the civil courts. Such decisions are based on Article 207 of the Industrial Property Law which provides that, independent of criminal proceedings, the aggrieved party may file a civil action to enjoin the unfair practice. Additionally, under Article 209 the aggrieved party reserves the right to receive damages in compensation for crimes caused by acts of unfair competition that tend t damage its reputation or business or cause confusion between commercial or industrial establishments or providers of services or between products and services placed on the market. The remedies available vary front preliminary and permanent injunctions and restraining orders to actual or statutory damages.
These provisions have been the basis for several civil cases protecting product configurations, shapes, labels and exterior and interior business designs and decors. The test applied by the courts is that the party seeking protection must prove that the features have been used in the local market in a consistent way so that they have become distinctive and that their adoption by a competitor will be likely to cause a confusion or diversion of clients from the senior user. The features must be distinctive and nonfunctional and must have achieved a role as a source identifier. The senior user of the trade dress does not have to prove actual confusion, since the law also applies to likelihood of confusion.
ln summary, although Brazilian law does not define trade dress law as such, there are legal provisions and remedies available to claim its protection, and case law history in Brazil is extensive in protecting trade dress under the law against unfair competition. However, it is strongly advisable to seek registration of trade dress under trademark or industrial design law, when admissible. In special cases where the feature is ornamental and original, the copyright law can also serve as a basis for protection.