Trade Dress Protection in Brazil

While there is extensive case law protecting trade dress under the Unfair Competition Law, protection under trademark or industrial design law should be sought where possible

Brazilian law does not specifically protect trade dress. However, there are statutory provisions and legal remedies available through which trade dress protection can be claimed. In addition, there is an extensive body of case law protecting trade dress under the unfair competition statute. Moreover, provided that product configurations, shapes, colour combinations, labels or distinctive designs and décors of businesses meet the requirements of registrability and are duly registered as trademarks, trade dress can also be protected against infringement under trademark law.

Three-dimensional marks (3D) are currently allowed in Brazil. The requirement of direct visual perception is not a problem and the National Institute of Industrial Property has been granting registrations for 3D marks for some time. Applications must contain different views (ie, front, back, lower and side views), as well as a perspective of the mark. As with any other mark, 3D signs must be distinctive. Thus, necessary, common or usual shapes of a product or its packaging are not registrable. Shapes that cannot be disassociated from a technical effect are also barred from registration.

In Brazil, packages and product configurations have in the past been registered as 3D marks. As use is not a requirement for obtaining a registration, distinctiveness must be analyzed without requesting proof of secondary meaning, which is a difficult task for examiners.

Conflicts between 3D marks and industrial design registrations are possible. Because of this, the law specifically prohibits the registration of industrial designs owned by third parties as 3D marks.

Three-dimensional marks can indirectly protect aspects of a package or product that are 'tactile' in their nature (eg, engravings and textures). Further, they can also be used to protect decorative elements of commercial establishments, such as restaurants, banks and gas stations.

Even if a product's trade dress is not registrable as a trademark, protection is still possible. Brazilian case law strongly upholds the protection of certain distinctive features of products or businesses that, although not registrable, function as source identifiers through consistent commercial use. The courts extensively protect non-functional and distinctive products or...