Trade Dress protection, a form of intellectual property protecting the characteristics of the visual appearance of a product or its packaging (or even the design of a building) that signify the source of the product to consumers, is a phenomenon relatively new to the South American legal panorama.
The concept of trade dress includes all the visual elements used to promote a specific service or product: the packaging, its shape, the color schemes, the interior design of a shop or even its architectural structure.
In Argentina, comprehensive trade dress protection is not provided by Trademark Law. Argentine Courts, however, acting in line with other South American Courts, have deemed the form of the product as worthy of legal protection and extended de facto the trademarkability of trade dress. In 2006, Pfizer Inc. brought a lawsuit against the Argentine company Microsules y Bernabó SA, on the basis that one of the Microsules’ product was too similar in shape and color to their own product, the well- known erectile dysfunction pill branded Viagra.
Microsules objected that Argentine trademark law did not consider the shape of products and their unique colors as trademarks. The Federal Court of Appeals on Civil and Commercial matters ruled in favor of Pfizer, stating that the particular combination of a shape and color used for the Viagra pill was original and worthy of protection.
Furthermore, the court established that Microsules had practiced unfair competitive behavior by marketing a medicine with the same therapeutic effect with the same shape and color.
Provided that it complies with the requirements established by the law or the case law, any trade dress can be registered as a trademark at the INPI Argentina. Alternatively, the trade dress can be protected as an industrial model if it fits the requirements set by Decree 6673/63. An industrial model is a three-dimensional shape of an object and can be registered if novel, original and if it provides an ornamental character for the product. The protection given to industrial models is somehow stronger: while the trademark owner can oppose registration only in the same or in a related class, the industrial model owner can prevent others from exploiting the design, no matter which sector they operate in.
In Brazil, courts are constantly challenged to decide trade dress infringement cases and have fairly evolved in the establishment of objective requirements to afford protection over a certain product or service. Trade dress protection is considered a "Jack of all trades" – mostly in a positive way – given it pervades different industrial property rights (such as figurative and 3D trademarks and industrial designs). It is useful to note that trade dress is one of the few alternatives one has for enforcing unregistered rights in Brazil, what is possible given the Brazilian Industrial Property Law (Act No. 9,279/96) provides that the protection of IP rights can be affected by combating unfair competition.
In the lawsuit moved by Duvel Moortgat against Cervio Comercio e indústroa de Bebidas Ltda. based on the infringement of the trade dress of the famous beer 'duvel', the 7th Trial Court of the city of Rio de Janeiro based its decision on a set of criteria to establish infringement, namely (1) the degree of distinctiveness of the sign being infringed (inherent distinctiveness); (2) the degree of resemblance between the signs in conflict (products side-by-side); (3) legitimacy and expertise of the infringer (awareness of the original product and assessment of the risks involved in reproducing the trade dress); (4) assessment of the time of coexistence of the brands and products in the relevant market; (5) quality and nature of the products; (6) public awareness and skill in the 'art'; (7) potential to make undue profits from the use of a similar design and/or risk of dilution of the brand or trade dress. The Court understood that even considering that some features used in the product packaging and label were not eligible to protection with exclusivity, the combination of the features as adopted by Cervio in their beer 'deuce' clearly reproduced the packaging and label adopted by Duvel, which caused undue association even to a skilled consumer. The Court determined the infringer to adopt a different and distinctive trade dress in their beer 'deuce'. There was no technical opinion and it has been a pioneer decision concerning trade dress infringement based on the set of requirements above.
On a different and more recent case, the 22nd Court of Appeals of Rio de Janeiro confirmed a lower court decision, which had considered trade dress infringement for the reproduction by Athletic Way Comércio de Equipamentos para Ginástica e Fisioterapia Ltda. of a line of workout machines called 'sensation / future' and 'selection / purestrenght' produced and commercialized by Technogym Equipamentos de Ginástica e Solução para o Bem Estar Ltda. and Technogym SPA.
According to the ruling, the defendant uses the same visual standards adopted in the original workout machines, such as colors and shapes. As such, the defendant competes unfairly with the owner of the original products, creating confusion and undue association not specifically amongst business managers in the workout segment, who are highly skilled, but in parallel segments such as hotels, resorts and clubs, among which the risk of undue association by using a misleading visual presentation of the product would be higher. According to the decision, the repression against unfair competition should be sought "regardless of the registration of an industrial design". Damages were deemed presumable and derived from the mere infringement of the trade dress.
In both cases, the plaintiffs were able to establish that they owned rights over a certain combination of elements that were unique and distinctive, deserving the protection as trade dress, irrespective of any prior registered right.
While trade dress is not protected in Mexico, trademark and industrial design registrations can be used to demonstrate that unauthorized use of trade dress constitutes unfair competition. ‘Trade dress’ refers to the combination of elements which distinguish goods or services and their owners from others. In Mexico, there is no direct protection for trade dress as a specific type of distinctive sign or mark, as there is in some other jurisdictions. Design elements can be protected in Mexico as trademarks, industrial models or designs and even as works of art. However, such protection relates to only one of the elements that constitute trade dress.
Notwithstanding amendments to the Industrial Property Law – as well as some guidance issued by the federal courts – the question of how best to provide protection remains unresolved.
In Chile, even though the law does not provide for trade dress and three-dimensional mark protection, some companies have successfully registered the labels of certain products as trademarks.
Consequently, should someone try to register a confusingly similar mark, the original trademark owner could file an opposition or cancellation action with the authorities. The lack of specific provisions protecting trade dress limits the enforcement provisions.