Trademark Caselaw | Brazil | PRADA Prevails in Seven-Year Trademark Infringement Battle
Late last year, the Superior Court of Justice (STF), in Brazil, ruled in favor of Prada S/A and confirmed a ruling that found Companhia Brasileira de Distribuicao (CBD) infringed its trademark PRADA, ordering CBD to cease using the subject mark and compensate Prada for damages; and putting an end to litigation that span over seven years, while highlighting applicable precedents regarding likelihood of confusion, the limits for judges in establishing damages, and the applicable rules for moral damages concerning burden of proof and statute of limitations.
Both Prada S/A and CBD had filed special recourses against the second instance court’s decision and so did co-defendants Commercial Maestral (MAESTRAL) and Belliz Industria (BELLIZ). During the process CBD admitted to the fact that it had sold “hair brushes, combs, scissors, nail pliers, mirrors, puffs, brushes, nail clippers, nail, exfoliating sponges, etc.” but argued that, since such goods were not included in the same class as the goods identified under Prada’s trademark registrations, in classes 3 and 25, there would be no likelihood of confusion.
STF noted that, although the second instance court’s decision came from what it deemed to be a mistaken factual premise associated with the well-known status of the PRADA mark, goods sold at CBD’s stores under such mark did infringe the plaintiff’s trademark rights, during a period of five years; and further analyzed undue association and unfair competition implications in the case, stating that relatedness of goods and services is not restricted by the classes they belong to, thus even in the case goods from different classes, bearing the same trademark, consumers could assume they are the result of an expansion of a product line, as long as such goods are related.
Trademark PRADA (Logo) as registered with Instituto Nacional da Propriedade Industrial in Brazil
Trademark registration No. 820331392 was cited in STF’s decision. It covers “perfumeru and hygiene products and toilet articles included in this class“. Click on the image to access its filing particulars.
Co-defendants’ special recourses were partially admitted in connection with their arguments regarding the second instance court’s not abiding by the non-ultra petita principle, when it ordered CBD to indemnify Prada by establishing loss of profits based on the benefits resulting from the infringement, instead of basing them on the criteria proposed in the suit, i.e. the remuneration that the defendant would have paid, in case it was granted a license. STF noted that limitations on judicial activity, e.g. the obligation for judges to rule on the merit of a case within the limits proposed by the parties, are based on both the Brazilian Civil Procedure Code and the Constitution.
In reviewing co-defendants’ argument regarding the five-year statute of limitations associated with a claim for damages resulting from a trademark infringement, STF established that any compensation sought thereof should be limited to five years prior to filing the corresponding lawsuit; and further analyzed a specific scenario where the statute of limitations was interrupted, i.e. a judicial notification carried out by Prada.
Finally, STF analyzed moral damages associated with trademark infringement, and found that such damages result from the harm in the trademark holder’s image, identity or credibility; and that they do not require additional proof other than the illicit act they stem from, i.e. the trademark infringement itself.
As a result, CBD was ordered to pay Prada 20% of the gross revenue it gained from the sales of the infringing goods, for material damages, and the amount of BR 50,000.00 (equivalent to approximately US$ 9,000.00) for the “pain and suffering” suffered, plus court costs and attorney fees set at 15% of the value of the conviction.
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