The Third Chamber of the Superior Court of Justice (STJ) recognized the need of expert examination in cases involving unfair competition by violation of trade dress of a particular product by its competitor, as reported in STJ Jurisprudence Bulletin No. 0612, published on October 25, 2017.

The lawsuit in question was initiated in 2008 before the 1st Civil Court of the Cataguases Judicial District of the State of Minas Gerais. The plaintiff, Companhia Manufatora de Tecidos de Algodão, claimed that its competitor, also operating in the fabric manufacturing sector, S/A Fábrica de Tecidos São João Evangelista, started using a packaging with a similar overall appearance to its own product, which therefore constituted a violation of trade dress.

The judgment partially upheld the Plaintiff’s plea and ordered the defendant to cease sales of its product, under penalty of fine, as well as to pay damages.

After the filing of appeals by both parties, the Court of Appeals of the State of Minas Gerais dismissed the Defendant's appeal, which requested that the Court annul the judgment due to the denial of a request to present expert evidence in order to prove whether in fact the similarity of the packaging would end up confusing the consumer market represents a violation of the right to present a full case. Conversely, the Court of Appeals upheld the appeal filed by the Plaintiff in order to recognize the need for compensation for moral damages by the Defendant.

After the presentation of an appeal to the STJ by the Defendant, the Third Chamber, following the vote of the Rapporteur Marco Aurélio Bellize, acknowledged that a technical knowledge would be needed to verify if the similarity of trade dress would be capable of generating eventual confusion on the consumer market. In fact, since the legal classification for unlawful competition is not objective and exhaustive, it would be necessary to analyze whether the similarity between the trade dress of the products would indeed be capable of causing the alleged confusion on the consumer market.

As a result, the Special Appeal was granted and the annulment of the sentence was determined, with the consequent return of the records to their Court of origin for the required expert examination.

The decision shows innovation in the field of intellectual property and sets precedent that guarantees to the parties, in the case of unlawful competition, the inalienable right to request technical expertise.

The decisions of Brazilian courts regarding the violation of a trade dress are often inconsistent, limited to subjective questions, based almost on psychological factors, focusing on the similarity or not of the trade dress. Therefore, this decision is extremely relevant for cases involving trade dress conflict since the expert evidence would reveal objective elements to be considered by the judge, such as: market characteristics, target public, market code of conduct, among others.