The judicialization of trademark disputes, the STJ’s (Superior Court of Justice) understanding and the protection given to trademark owners to prevent others from “hitching a ride” on their fame and prestige
In 2022, three Brazilian comedians, Danilo Gentili, Diogo Portugal and Oscar Filho, and a wine importer teamed up to create a line of wine aimed at an audience that would normally consume beer and, with affordable prices, the intention was to democratize wine consumption.
The idea of artists licensing brands and using their influence to expand sales has been growing lately, but in the case of the comedians, the product’s conception, from the name to the label, was inspired by a wine that was already well-known and renowned on the national and international market.
The name created by the comedians was Putos, a satire of the existing and famous Petrus, but in addition, the labels of the two products had similar colors and contained identical elements, such as a red seal, vine branches, the image of faces in a circle and even the font was similar.
Petrus therefore notified the importer of Putos wines that commercial exploitation of the product would infringe its intellectual property rights. However, the Judiciary Branch had to be called in and, in June 2024, it granted Petrus’ request for an urgent relief, ordering the importer to refrain from selling Putos wines.[1].
In December 2024, a judgment was rendered upholding Petrus’ claims and, confirming the preliminary injunction, ordering the distribution, export, marketing and advertising of Putos wines to cease, as well as ordering the payment of compensation for moral damages in the amount of R$50,000 and material damages for loss of profits to be determined at a later stage.
An analysis of the case based on Brazilian industrial property legislation, Law No. 9.279/96, leads to the conclusion that it would not even be possible to register the Putos trademark with the National Institute of Industrial Property (INPI), the federal autonomous agency responsible for granting and guaranteeing industrial property rights in the country (trademarks, patents, industrial designs, geographical indications and others).
This is because article 124, III of the aforementioned legislation states that expressions that are contrary to morals and good customs or that offend the honor or image of people or violate personal or collective freedoms[2] cannot be registered as a trademark, and this was exactly what the autonomous agency understood when, in December 2022, it rejected the application to register the Putos trademark[3].
However, the fact that the trademark was not registered would not in itself prevent it from being used in Brazil, which is why the Petrus brand went to the Judiciary Branch, demonstrating the obvious similarity between the names and the labels, and claiming that there was an intention to copy, through the words of the comedians themselves, who had declared their intention to imitate the famous wine.
Thus, demonstrating its right to protect the reputation of its duly registered trademark, in terms of the name (nominative)[4] and the elements of the label (mixed)[5], it claimed that Putos had committed unlawful reproduction without the authorization of the owner[6] and requested that the products be withdrawn from circulation, as well as compensation for material and moral damages.
The importer raised the argument that both the name and the label were satires, forms of language protected by the freedom of expression provided for in the Federal Constitution. However, as the sentence rightly points out, industrial property legislation does protect free expression, removing the trademark owner’s right to prevent the trademark from being cited in publications, provided that such citation has no commercial connotation and does not harm the distinction of the trademark[7], which was not the case with Putos.
It is also important to point out that, as was acknowledged in the ruling, the possibility of causing consumer confusion would be remote, as the products are aimed at different audiences, especially when one notices the great difference in the prices of the wines; however, the mere fact of not causing consumer confusion does not result in the absence of a trademark infringement.
The magistrate emphasized the occurrence of a free riding effect, to the extent that, as stated in the judgment, Putos was “usurping the prestige and fame won and acquired by the plaintiff [Petrus] with its brand in order to promote its product without any compensation”[8].
The riding effect is admittedly a practice of unfair competition in the parasitic mode which, as shown above, is characterized when a trader takes advantage of another’s personal achievements and reputation, even when it is done without the intention of causing damage.
The rendered judgment follows the same line already established by the Superior Court of Justice, which, when dealing with similar situations, has also reaffirmed the need to withdraw from circulation products that took advantage of the riding effect.
The first case was heard by the STJ in April 2021 and involved two energy drink manufacturers, Red Bull and Power Bull, the former challenging the latter’s ability to use the term “bull”. In the judgment, Rapporteur Judge Villas Boa Cuêva held that the use of the expression would cause a risk of undue association because, even though they were products with no visual similarity and with different colored packaging, the name was similar and they would be products from the same market segment that would be sold in the same place and aimed at the same public.
Another case was judged by the STJ in September 2021 and ended a years-long dispute between the Johnnie Walker and João Andante brands. In the judgment, Rapporteur Judge Paulo de Tarso Sanseverino understood that, even though they were different products (whisky and cachaça), parasitism would be characterized, insofar as the products were from the same market segment, in addition to the name being an almost literal translation of each other and similarities being found on the label, while the whisky featured an English lord walking with a hat and a cane, the cachaça featured a sertanejo also walking, but with a bundle on his back.
The aforementioned decisions on wines, energy drinks, whisky and cachaça reinforce the need to protect human creation, an instrument of power and wealth protected by intellectual property law.
Leaving the Brazilian sphere for a moment, in January of this year it was also in the news that the American chain Walmart had created and started selling an item visually similar to one already designed by a luxury brand: the Birkin bag, by the French brand Hermés, which can cost from R$60,000 to R$3 million, which was replicated by Walmart, nicknamed “Wirkin” by Internet users, and which is being sold in the United States for prices ranging from R$480.00 to R$630.00.
If the dispute over the aforementioned handbags were to go to court, the French brand could allege obvious trademark infringement and, similarly to the case of wines, even if there is no possible case of consumer confusion, which would be different, the acts of parasitism would still be characterized which, following the understanding established by the STJ, would force the withdrawal of the “Wirkin” handbag from circulation and possible payment of compensation.
[1] Case records No. 1082835-82.2024.8.26.0100
[2] Art. 124. They cannot be registered as trademarks: […]
III – expression, figure, drawing or any other sign contrary to morals and good customs or that offends the honor or image of persons or attacks freedom of conscience, belief, religious cult or idea and feeling worthy of respect and veneration;
[3] INPI Process No. 924898950
[4] INPI Certificate No. 911408983
[5] INPI Certificate No. 821043196
[6] Art. 189. Commits a crime against registration of a trademark:
I – who reproduces, without holder´s authorization, in whole or in part, trademark or imitates it, in order to may cause confusion; or
II – altering someone else’s trademark already affixed to a product placed on the market.
Penalty – detention from three (3) months to one (1) year, or fine.
Art. 190. Commits a crime against trademark who imports, exports, sells, offers or exhibits to sale, hidden or having in stock:
I – product signed with mark illegally reproduced or imitated, of other, in whole or in part; or
II – a product of its industry or commerce, contained in a container, receptacle or package bearing the legitimate mark of another.
Penalty – solitary confinement from one (1) to three (3) months, or fine.
[7] Art. 132. The trademark owner may not: […]
IV – prevent the trademark from being quoted in speeches, scientific or literary works or any other publication, as long as it has no commercial connotation and does not harm its distinctive character.
[8] Sentence of the case records No. 1082835-82.2024.8.26.0100
Available in: https://www.migalhas.com.br/depeso/425319/atos-de-parasitismo-e-violacao-marcaria-o-caso-petrus-x-putos
Autor: Fernanda Regina Negro de Oliveira • email: fernanda.oliveira@ernestoborges.com.br
