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The Fourth Panel of the Superior Court of Justice[1] held that a court expert opinion is required to verify trade dress infringement, which constitutes unfair competition. According to the Panel, a comparative analysis by courts of photographs alone would not be enough to provide that the trade dress of a product or service creates confusion with the industrial property of another.

Kiviks Marknad Indústrias Alimentícias Ltda. filed a lawsuit against Ritter Alimentos S.A. seeking damages and cease of use of defendant’s product packaging based on unfair competition claims due to trade dress infringement, as the packaging used for the same type of product would be very similar and capable of causing consumer confusion. The defendant argued that the trade dress of its product would not cause confusion and requested opinion of a court expert.

The lower court decision, affirmed by the Court of Appeals of the State of São Paulo, ordered the defendant to refrain from using the packaging under discussion, deeming unnecessary the court expert opinion. However, Justice Isabel Galotti, Reporter of the appeal filed before the Superior Court of Justice, held that denying the production of the court expert opinion would violate due process and characterize curtailment of defense, since the decision was based only on the observation of photos of the packaging of the products.

According to the Reporter Justice, the lower courts analyses disregarded the importance of a technical evidence in this case due to the complexity and diversity of the device elements of the product packaging, the lack of express legal prohibition and the impossibility of registration of trade dress before competent authorities.

Therefore, the Fourth Panel decided to grant the appeal remanding the case to the lower court for production of the court expert opinion.

[1] Special Appeal No. 1778910