Brazil's legal system provides several options for IP owners to enforce their rights. Trade dress protection is not expressly foreseen in our law but falls within general unfair competition rules which basically forbid competitors to fraudulently divert third parties' clientele.
Preliminary injunctions (PIs) are widely available and can be granted ex parte and without the need to post a bond. PIs have been consistently granted in trade dress cases, although no trade dress registration is available in Brazil.
However, a decision from Brazil's Superior Court of Justice (SCJ) at the end of 2017 changed this trend. The decision basically stated that trade dress infringement should not be decided based on the judge's subjective perspective so that an opinion from a court's technical expert was warranted.
Although such SCJ decision is not formally binding, lower courts started rejecting PIs on trade dress cases based on the argument that a court's expert opinion could not be issued at such early stages and, therefore the plaintiff's claims were not strong enough to merit a PI.
However, the SCJ decision expressly mentioned that the expert report could be waived if unnecessary based on other produced evidence. Put another way, in cases where the plaintiff provides alternative evidence which is strong enough, PIs can still be granted.
Lower courts have now adjusted their understanding and PIs are once again being granted at the State Courts of Rio and São Paulo. Plaintiffs must show evidence that the infringed trade dress is not common and that similarity between products may mislead consumers. This can be achieved by comparing available products and obtaining an independent consumer survey.
André Oliveira
