Trade dress protection: a glimpse at the beverage market

Legal framework
Beverage market

'Trade dress' is defined as a set of elements that comprise the visual identity of a particular product or service, distinguishing and individualising it from others, in order to make consumers choose it over a competitor product. Hence, trade dress can be a relevant business differential, providing a competitive advantage in the race to conquer difficult consumer markets.

Legal framework

In Brazil, trade dress protection is supported in several regulations, all under the concept of unfair competition. The Industrial Property Act (9279/96) (Section 195(III)) and the Paris Convention (Section 10bis, 3, Paragraph 1) both contain provisions prohibiting fraudulent practices which mislead or create confusion, by any means, with the products or services of a competitor. In addition, Article 5(XXIX) of the Federal Constitution grants protection to inventions, creations, trademarks, company names and other distinctive signs.

The Industrial Property Act lists a series of prohibited practices when defining 'unfair competition'. In particular, Article 195(III) establishes that any "fraudulent means to divert, for your own or a third party's benefit, a competitor's clientele" is considered an illegal act.

Trade dress protection in Brazil has also been widely acknowledged by the courts, and case law has been an important source of its doctrinal foundation, not only before state courts, but also in the Superior Court of Justice. For instance, the Rio de Janeiro Appellate Court gave a good indication regarding the scope of trade dress protection in Brazil when it defined 'trade dress' as a:

[s]et of characteristics, which may include, among others, a color or color scheme, shape, packaging, product configuration, signs, phrases, layout, styling and size of letters, graphics, drawings, emblems, textures and ornaments generally able to identify a particular product and differentiate it from the others.(1)

The main condition for the protection of an unregistered trade dress is that the features have been used consistently in the local market, so that they have become distinctive, and that their adoption by a competitor is likely to cause confusion or divert clients to another product. Therefore, the features must be distinctive and non-functional and the trade dress must have achieved a role as a source identifier, regardless of a formal registration.

Beverage market

In the beverage industry, trade dress protection covers:

• the shape of the bottle;
• the colour combination featured on the label, bottle and lid;
• the marks involved;
• the stylisation of the mark and all of the written information on the label; and
• all other visual elements that distinguish one product from another.

As highlighted below, several decisions have granted trade dress protection for types of beer, vodka and wine against competitors that sold identical products with confusingly similar bottles or visual elements that could have created a misleading connection with a competitor product or service.

Duvel versus Deuce
In Duvel Moortgat v Cervio Comércio e Indústria de Bebidas Ltda – EPP, the Rio de Janeiro Court of Appeals found that the defendant's beer, Deuce, infringed the trade dress of the plaintiff's beer, Duvel, since the defendant's bottle could cause confusion and false association in view of its visual similarities with the plaintiff's bottle, including with respect to:

• typeface;
• label layout;
• colouring (white and red);
• the meaning of the name when translated into Portuguese (ie, devil);
• bottle shape;
• the type of beer; and
• the fact that both beers were of Belgian origin.

Duvel versus Deuce

Even after the defendant made layout changes during the first-instance procedure, the Rio de Janeiro Court of Appeals considered that the similarities still prevailed and that, due to the resemblance between both trademarks, which were designated in the same market field, several customers may already have been diverted away from buying the plaintiff's beer, which the court characterised as an act of unfair competition.(2)

Skol Beats versus Kislla Summer Beach
In another case, the Rio de Janeiro Court of Appeals ordered 101 Brasil Indústria de Bebidas Ltda to refrain from commercialising its Kislla Summer Beach vodka in any bottle whose trade dress was similar to the Skol Beats vodka commercialised by the plaintiff, Ambev SA, one of the biggest beverage companies in the world.(3)

Skol Beats versus Kislla Summer Beach

By focusing its analysis on the similarities rather than the differences between the visual aspects of Skol Beats and Kislla Summer Beach (which is the accurate method for analysing potentially infringing products), the court concluded that customers could be confused by the indisputable resemblance between both products due to:

• the combination of blue and silver on both bottles;
• the use of the same visual arrangement and similar elements, such as the product arrow; and
• the phonetic resemblance between the terms 'beach' and 'beats'.

Jurupinga versus Jeropiga
In another case, the Sao Paulo State Court, after analysing both products side by side on the market, ruled that a regular customer could easily be confused by the clear similarity between Jeropiga and Jurupinga.(4) Besides having similar marks:

• the drinks were identical in colour;
• the label backgrounds were similar in colour; and
• the images of bottles, barrels and bunches of grapes on each label were printed in similar colours.

Jurupinga versus Jeropiga

For further information on this topic please contact Ana Paula Affonso Brito at Montaury Pimenta, Machado & Vieira de Mello by telephone (+55 21 2524 0510) or email (anapaula.brito@montaury.com.br). The Montaury Pimenta, Machado & Vieira de Mello website can be accessed at www.montaury.com.br.

Endnotes

(1) Rio de Janeiro Appellate Court, Appeal 0090918-04.2007.8.19.0001. 12th Civil Court, Appellate Judge Lucia Miguel S Lima. Decision rendered on 27 January 2009.

(2) Lawsuit 0254911-82.2014.8.19.0001, Rio de Janeiro State Court.

(3) Lawsuit 0071156-50-2017.8.19.0001, Rio de Janeiro State Court.

(4) Lawsuit 4001048-52.2012.8.26.0309, Sau Paulo State Court.