Trade Dress

Trade Dress is the set of image that identifies the brand, product or service generating recognition from the general public, not limited to packaging, label, etc., but the sum of all elements.

The expression “Trade Dress” appeared in mid-1946 in the United States, where the first discussions about industrial property and its right to register began, and there was even its own legislation that deals with the regulation and protection of this set of image.

For example: when we think of the “Fanta” line of soft drinks, we are automatically referred to the shape of its bottle; or when we imagine the “Havan” chain of stores, we remember the distinctive architecture and the glamorous statue of Liberty. However, these characteristics are not the brand itself, nor can they be patented or registered, but they are fundamental for identification and individualization of the brand or product.

Although there is this relevance to the market, Trade Dress has no legal protection, since there is no specific norm in the legal system that makes express mention of the Institute, although some elements are subject to registration (trademark, industrial design, etc.), registration as a Trade Dress is not possible.

Following this understanding, because there is still no regulatory body for this visual identity as a whole, the violation of Trade Dress in Brazil is more common than we imagine, such as the case of “Uai in Box”, which was accused of violating the Trade Dress of the Chinese food fast-food chain “China in Box”, which in addition to the similarity in name the first used the identical packaging to the second.

Currently, the Superior Court of Justice (“STJ”) has signed an understanding that it must be analyzed case by case in order to grant protection to Trade Dress or not. This protection is given by equating these characterizing elements with the trademark, patent and Industrial Design Institute.

Thus, trade Dress violation occurs when a diverse brand/product imitates the distinctive elements of the visual identity of another brand/product, with the aim of obtaining an illicit advantage over the consumer, affecting the free initiative of competition.

Therefore, the exercise of business activity must be based on loyalty, transparency and based on good faith. The individual has the freedom to exercise any activity, except in cases where the law prohibits, competition being the irrefutable practice in the exercise of business activity.

Thus, the violation of Trade Dress, in Brazil, for not having its own typification and for being understood as an act that hurts loyalty, transparency and good faith , is understood and punished as unfair competition.

Finally, there is a good chance that this protection will change soon through the creation of specific legislation to deal with Trade Dress, but the discussion is still uncertain.

What we have left, for now, is to wait for the changes made in the legislation in order to protect something more comprehensive than just the trademark, patent and Industrial Design.

Pedro Anselmo Boaventura-graduated in law, from Centro Universitário Padre Anchieta (2021). Postgraduate in Civil and Business Law from Faculdade Damásio De Jesus. Paralegal of the advisory Department of TM Associados.