Newsletter Edition 31 - December 2021


Intellectual property against unfair competition in the fashion industry

The analyses of real cases of trademark registrations, infringements, and court decisions involving intellectual property rights in the fashion industry heated the debate on “Protection of garments: trademark, copyright, industrial design or unfair competition”. The event also addressed the recent regulation of position marks by the BPTO and the analysis of the STJ’s decision in the Loungerie x Hope case and brought together ABPI director Rodrigo Ouro Preto, Judge Flávia Romano de Rezende, of the Rio de Janeiro State Court of Appeals (TJ-RJ), and Kone Prieto Fortunato Cesário, professor at UFRJ and the BPTO Academy.

In her presentation, Judge Flávia Romano de Rezende recalled that it is not only the Brazilian Industrial Property Law (Law 9,279/96) that deals with unfair competition, and cited the Antitrust Law and the Civil Code, which also regulate the matter. “There is no inconsistency between freedom of competition and intellectual property, as the legislator’s intention is the same: economic development, job creation, and the generation of resources for investment”, she said. “In infringement cases, the judge must have common sense and analyze the impact of his decision on the market”. In this regard, Montaury Pimenta noted that the low compensation amount imposed on offenders ends up being an incentive to the infraction. “Indemnities for damages and moral damages end up rewarding the offender when they should inhibit this practice”, she said.

Ouro Preto provided an overview of legal protections in the fashion industry involving unfair competition, position marks, copyright, and industrial design. “The advantage of copyright protection is that it will be absolute. Regardless of the activity of the eventual offender, he will be subject to copyright infringement”, he explained. For the ABPI director, of all types of protection, unfair competition is a kind of “umbrella that regulates all intellectual property rights and aims to prevent unfair and dishonest behavior by competitors”.

Professor Kone Cesário argued that each distinctive sign must be protected according to its characteristics. “I believe that each distinctive sign has its place and not multiple registers, which is a mistake”, she said. “Choosing to register as an industrial design and then as a three-dimensional trademark or another type of attempt to perpetuate the right is not the function of intellectual property”. The deputy director of the FND foresees many questions to be discussed about the position marks recently regulated by the BPTO (Brazilian Patent and Trademark Office). “There has been a great limbo of these anomalously registered trademarks for many years now. What will the distinctiveness and protection of these marks look like when they are repositioned to position marks?”, she asked.