Decolar.com vs Decolando.com.br
The 3rd Panel of the Superior Court of Justice decided1 that misleading consumers by using a trademark similar to another used by a well-established company generates moral damages and the duty to indemnify.
The Reporter Justice Nancy Andrighi, acknowledged the anteriority of the plaintiff’s corporate name, domain name and trademark “Decolar.com” (in English “to take off”) to the registration of the contested domain name (decolando.com.br – in English, “taking off”) in the name of the defendant Decolando Turismo. The Justice also confirmed that moral damages arise from proof of the unlawful conduct, and that evidence of the damage itself was irrelevant.
Therefore, in an unanimous decision, the justices recognized the conflict between the trademarks, since both arise from the verb “take off“, and that the use of the gerund “taking off” would not be sufficient to prevent the infringement. Finally, the justices ordered the cancellation of the defendant’s domain name, and the payment of moral damages in the amount of approximately USD 15,000 to the plaintiff.
1 Special Appeal No. 1.804.035