Brazilian courts approve doctrine for examination of trademark conflicts

October 2016 | EXPERT BRIEFING | INTELLECTUAL PROPERTY

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In most jurisdictions, the ‘likelihood of confusion’ is one of the requirements for the finding of trademark infringement. But which factors should be analysed in order to determine whether or not there is ‘likelihood of confusion’ between two marks?

In recent precedents, Brazilian courts have been applying standards fixed by the local doctrine, the so called ‘360 test’.

The 360 test stems from a study of Brazilian jurisprudence over the last two decades, which raised seven main criteria that should be taken into consideration when examining the likelihood of confusion or likelihood of association. Upon weighing and matching a large number of decisions on trademark conflicts, a consistent test could be built, which, not surprisingly, coincided, in many respects, with the criteria laid down by law or jurisprudence in other countries.

The criteria established by the 360 test are: (i) the degree of intrinsic distinctiveness of the marks; (ii) the degree of similarity of the marks; (iii) the legitimacy of the alleged infringer; (iv) coexistence time of the marks in the market; (v) the nature of the products or services at issue; (vi) the specialisation of the target audience; and (vii) the possibility of dilution of the senior mark.

The Brazilian Superior Court of Justice first applied the 360 test when rejecting an interlocutory appeal in a special appeal in the lawsuit BRF S/A vs. PepsiCo Inc., which discussed the possible conflict between the trademarks ‘Chester’ (which was registered for ‘meat, poultry and eggs’ for food) and Chester Cheetah (which was registered for ‘snacks’).

In his vote, which led to a unanimous decision from the Third Panel, the Reporter Justice expressly referred to the 360 test and analysed each of its seven criteria in relation to the facts and evidence of the case, concluding that the word mark Chester and the word-and-design mark Chester Cheetah should be allowed to coexist.

Besides regular trademark conflicts, the 360 test has also been applied to solve trade dress cases. In Dragao Quimica vs. J & F Participacoes, the Appellate State Court of Rio de Janeiro has applied this doctrine as analysis criteria involving the packaging of two hair conditioners. Upon applying the 360 test, the Court considered that: (i) the marks have a high degree of distinctiveness; (ii) although they have similarities as to the shape and colour, the packages have sufficient distinctive characteristics; (iii) the product of the defendant follows a market trend so it is not possible to affirm they have acted in bad faith; (iv) the concomitant use of similar packaging over the decades shows that consumers are used to distinguish both products; (v) although the case involves products of the same kind, this market is very diluted and consumers are used to seeing and distinguishing hundreds of packages, many of them similar to each other; and (vi) there is no evidence of violation of the uniqueness or reputation of the plaintiff’s mark.

In another trade dress potential violation case, the 360 test was applied by the judge to replace the work of a court appointed expert, given that the parties did not agree to pay for the expert’s fees. This was the solution found by the magistrate of the Seventh Corporate Court of Rio de Janeiro in Duvel Moortgat vs. Cervio on the conflict between the packaging of Duvel and Deuce beers.

In the absence of an expert legal opinion, the magistrate personally applied each of the doctrine criteria, concluding that “under the detailed 360 test, it is unavoidable the conclusion that there was violation of the visual aspects of the plaintiff’s product and the intention of the defendant to take a free ride on the foreign product”.

In parallel to the abovementioned precedents, it is important to stress that the new Brazilian Civil Procedure Code, passed in 2015, demands from judges a greater degree of accuracy and detailed reasoning when issuing preliminary injunctions or the final ruling. In this connection, Article 489 rules that the decision cannot indicate legal provisions or make generic statements without explaining the pertinence to the case. Moreover, the Civil Procedure Code requires the judge to face each and every argument of the parties, under penalty of having his or her decision declared null and void by the Appellate Courts.

The use of standards such as the 360 test is certainly helpful to assist judges when examining trademark or trade dress conflicts. Likewise, these comparison parameters are very useful to lawyers when organising and presenting their case in legal opinions or at Courts.

Filipe Fonteles Cabral is a partner at Dannemann Siemsen Advogados. He can be contacted on +55 21 2237 8804 or by email: filipe@dannemann.com.br.

Filipe Fonteles Cabral

Dannemann Siemsen Advogados