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FORMS OF PROTECTION OF TRADE DRESS UNDER THE BRAZILIAN LAW

This paper primarily aims at establishing, under the Brazilian Industrial Property Law, the protection of trade dress, and it aims to generally discuss the means used for the protection of the said institute in Brazil, since the country has no specific legislation in this regard.

Initially, it is understood that brands are identification signs of products and services, which are perceived by the consumer mainly due to all its visual aspects. This whole visual aspect covers both the brand and other external elements, which together should form a sufficiently distinctive set that will serve as a tool for achieving a loyal customer base.

The visual appearance of a product, or the way a service is rendered, is known as trade dress, which is a distinguishing component of the supplier of the product or service, which is nothing but the combination of several elements that will form, in theory, a unique presentation. One can say that the trade dress works the same way as trademarks do, since it allows the consumer to identify the origin of a product or service

Long ago, the trade dress was defined as the “dress” of a product or service, i.e., the particular way it is presented. Figuratively, it would be the uniform worn by all staff of a company.

It should be clarified that the features found in a given trade dress should be individual and unique, since consumers tend to identify products through the overall visual impression conveyed, immediately, even before identifying your brand or trade name, reason why it is necessary to create a trade dress which is able to attract and retain customers as well as bring an identity and differentiation in comparison with competitors.1

As a result, in the current market, business strategies have become aggressive due to Consumer demand, which values the innovation, being the visual identity of products or services the image that the company wants to convey to the consumer market, which will formalize their personality.

When the consumer is unable to distinguish between an original trade dress and a counterfeit one, it is a slavish copy or objective reproduction. However, the most widely used type of reproduction is the one in which the third party only tries to mislead the consumer, reproducing the essential features of the original trademark set, creating the idea that his product or service is the same pointed out by the genuine trade dress.

Due to the highly competitive contemporary market, the intention of the entrepreneur to invest in a particular and attractive trade dress is to attract consumers and distinguish him from its competitors, since an innovative visual appearance brings many economic advantages to the entrepreneur.

The economic freedom and free private enterprise principles are perfectly justifiable provided that they do not violate the rights of others. In this regard, José Carlos Tinoco Soares declares that “imitation is the instrument used in the composition of a brand, whose purpose is to mislead justice and the absent-minded consumer”.

In order to contextualize the trade dress protection in today’s world, we must clarify that the globalization phenomenon, when business relationships were obtained, made owners of intellectual property rights need better protection in relation to these rights, especially in light of the commercial activities carried out from one country to another.

Thus, several International Treaties and Conventions were signed, such as CUP – Convention of the Union of Paris, dated March 20, 1883, of which Brazil is a signatory. The Article 1 of said Convention provides that:

(1) The countries to which this Convention applies
constitute a Union for the protection of industrial property.
(2) The objects of the protection of industrial property include: invention patents, utility models, industrial designs or models, service marks, trade names, indications of origin or designations of origin as well as the repression of unfair competition.

The trade dress protection is primarily made by the laws covering Intellectual Property rights. Due to the extent of the protection of intellectual property, this protection is also based on the repression or prevention against unfair competition, according to article 10 of the CUP:

1) The countries of the Union undertake to assure the
nationals of the Union´s countries effective protection against unfair competition.
(2)Unfair competition includes act any act of competition contrary to honest practices in industrial or commercial matters.
(3) The following in particular shall be prohibited:
1° Any acts likely to, by any means, create confusion with the establishment, products or the industrial or commercial activities of
a competitor.
2° False statements in the course of business, which are likely
to discredit the establishment, products, or
industrial or commercial activities of a competitor.
3 ° The indications or statements whose use in the course of trade
trade is likely to mislead the public in relation to the nature,
manufacturing method, features, possibilities of use or quantity of goods

According to the laws of our country, there is no specific protection to the trade dress, since the protection offered by our legislative system is only given to registrable individual elements that comprise the trade dress of a product or service as a whole.

Initially, the violation of trade dress could be restrained by the guidelines which support the elements of the trade dress through the protection of Copyright, Industrial Design and registrable trademarks, i.e., the trade dress protection could belong to the Copyright field, as well as to the Intellectual Property right.

With respect to the protection based on the Law of Trademarks, our legislation provides that distinctive signs visually perceptible be subject to registration, excluding the constant legal impediments of Article 124 of the LPI. Thus, once the trade dress is sufficiently distinctive in its group to identify a product or service, there are no impediments to its registration as a trademark before the INPI (National Institute of Industrial Property).

The attributive system of rights applied in Brazil expresses that the ownership title over distinctive signs comes from its regular registration, and not from its mere use, as with the countries adopting a declaratory system. The registration of trade dress as a trademark enhances the placement of the entrepreneur in the consumer market, in addition to ensure him greater stability and security as a right-holder, using the devices related to the trademark infringement to object potential reproductions or imitations of trade dress.

The trade dress may be registered in the composite or three-dimensional mark format, preferably with color claim. According to the lessons from José Carlos Tinoco Soares, the composite mark includes tag, label, packaging and all forms of product presentation for consumption. Three-dimensional mark is the one formed by the plastic configuration of the product or packaging, in which the shape has a distinctive character and is dissociated from technical effect.3

It is worth mentioning that the registration of the trade dress as a trademark to plead its protection is not mandatory.

However, the trademark registration gives the owner exclusive rights in the national territory, making the possibility of the offender to defend himself difficult by claiming the lack of competitive relationship given
the fact that they operate in different states, in addition to ensure more effective means for obtaining injunctive relief.

The registration of the trade dress as an industrial design takes place when the trade dress is based on an ornamental plastic shape of an object, or the ornamental set of lines and colors that can be applied to a product. In Brazil, in addition to the legal prohibitions, an industrial design falling within the state-of- the- art cannot be registered. Moreover, the trade dress to be registered must have a unique visual structure compared to existing objects.

The trade dress can also be protected by copyright, keeping in mind that some of its features are within the context of creation of mind, for instance, the case of architectural designs, design prints and websites.

The architectural designs include façades of buildings, shop interiors, layouts of restaurants and the blueprint of business establishments. Thus, if the architectural design of an establishment is usurped, its owner may claim protection measures based on copyright

It is also worth mentioning that the protection by Copyright does not rely on registration, as provided in Article 18 of the Copyright Law, Law no. 9.610 / 98, however, the registration with the National Library, in the case of written works, as well as at the School of Fine Arts, in the case of plastic works, drawings, etc., is an important evidence in the event of any conflict.

An exemplary case of trade protection by copyright took place in Rio de Janeiro, when a manufacturer of apparel made a t-shirt especially for the World Cup that year. That t-shirt was sold only at the company´s stores or authorized resellers.

However, the staff of a supermarket of the city started to wear as uniform the shirts that faithfully reproduced the appearance of the exclusive t-shirt manufactured by the complainant company. In addition to violating the trade dress the value added to the t-shirt would also be affected, since wearing such model by the supermarket´s staff could reduce considerably the demand for the original t-shirt.

Thus, the infringement suit was filed against the offending company and the competent court granted the postulated injunctive relief, nodding to the visual set of the t-shirt worn as a uniform by the staff of the supermarket afforded he protection under Article, section 8 of the Copyright Law, and the defendant company was required to replace the counterfeit t-shirts immediately:

The identity of the design and similarity of the font used in that t-shirt is evident with the one used by the staff of the defendant company, as evidenced by the photographs attached on pages 49/50, since the work is afforded protection, as set forth in Article 7, 8 of Law. 9.610 / 98, and the unauthorized reproduction allows the author of the work to request the search and seizure of the copies or simply suspend the dissemination.

With respect to the protection based on repression to unfair competition, the diverting of customer may be described as a fraudulent practice in cases of trade dress violation to the following situation: there is a packaging of a product or a layout of an establishment that presents a sufficiently distinct trade dress, such characteristic makes consumers recognize it immediately as an identifier of a particular product or service. A third competitor reproduces or imitates the renowned trade dress with the aim to obtain advantages and expand his business.

Thereafter, when the consumer is faced with a counterfeit trade dress, he will immediately associate it with the original trade dress, being misled and making an improper analogy between the products or services as he tends to believe that there is a relationship between the companies concerned.

It is important to note that whenever there is a risk of confusion to the consumer market the prohibition rules to unfair or unlawful competition are applied, although the analysis of this risk is presented subjectively, since each individual has a different conception of the similarity degree between two trade dress, as shown below:

“The object of this complaint, as shown in the initial one, is to compel the defendant companies to refrain from the use, under any form or pretext, of the characteristic features of product packaging […] The focus should include
certain amount of subjectivity, in the case, above all,
recognize or not the product of cracking can
confuse the consumer, diverting the customers of
the appellant, whose apple of the eyes have been known
for a long time, used over generations. “4

It is also worth noting that, when using isolated features directly linked to a product or service, a competitor would not be acting unfairly, even if the owner of the original trade dress has been the forerunner to use them, because these are available features considered common use in the segment concerned.

Thus, it is necessary to act wisely about the protection of the trade dress consisting of such features. The conditions to investigate the distinctiveness of the trade dress will be stricter; however, it does not exclude the possibility that a trade dress consisting of attributes related to a product or service be susceptible to prohibition protection against unfair competition, since it is only necessary that the association of such features achieve adequate distinctiveness.

Thus, due to the high competitiveness of the contemporary market, the trade dress institute has taken a stand of great importance, being essential that the entrepreneur invests in a sufficiently distinctive trade dress in order to identify products or services, since it will be responsible for attracting and retaining their customer base and distinguishing them from competitors.

Moreover, the packaging and the shape of a product or the façade of a commercial establishment, when presented in an attractive and differentiated way, will result in economic benefit to the trade dress owner in relation to his competitors.

In addition to conquering consumers, the identifying sign of a product or service has great value in the representation of your brand, reinforcing the concepts and values of the company owner of the sign, positioning it before a highly competitive economic environment.

It is quite common that the “dress” of a product or service, as well as the layout of an establishment, influence consumers when purchasing them. While this trade dress adds a great value to the company, in addition to create income sources, it consequently draws the attention of competitors whose purpose is to take advantage of the fame and visibility of others.

Thus, there is no doubt concerning the need to protect a trade dress objectively, increasingly looking for effective and intensive strategies, so that there is no economic losses generated by third parties who want to take advantage of the investment of others.

In view of the lack of specific legal provision in our legal system, judges tend to decide conflicts involving the non-authorized use, reproduction or imitation of trade dress in an objective manner, leading to jurisprudence controversies about the best way to protect such Institute.

In this regard, it is worth mentioning that a trade dress subject to protection must be covered with a sufficiently distinctive character so that the risk of confusion may be analyzed in a more objective manner. Such distinctiveness may be originated or acquired.

In the first case, it is only required that the original trade dress displays distinctive attributes of other visual presentations of products or services placed in the same economic sector. In the case of the distinctiveness acquired, it is identified that an original trade dress is not presented in a significantly different way, since it is formed by common features, which are also found in their competitors; however, thanks to its continued use, the recognition was achieved before the consumers.

In order to achieve exclusive rights to a particular trade , in the event of any conflict, it is up to the owner to show that the visual aspects that his product or service identifies are different when considered as a whole, as well as evidence the possibility of confusion and improper association between them and third parties.

It is therefore concluded that the trade dress finds affordable means of protection in Brazil, although the Brazilian legislation does not provide for a specific instrument for such. This protection will be made by means of the provisions contained in the Copyright, Industrial Property, as well as through the repression of unfair competition.