Identical Trademarks For Same Goods Of Different Quality - Court In Brazil Permits Coexistence

Mondaq Business Briefing, February, 2003

Companhia Prada Industria e Comercio (plaintiff), owner in Brazil of the registered trademark PRADA for clothing, filed an ordinary court action with the State Court of Sao Paulo in 1997, requesting an injunction and damages, against Boutique Daslu Ltda. (defendant) for infringement of the mark PRADA. The plaintiff argued that the identical marks, both PRADA, created a risk of confusion, and could not coexist in the same clothing segment. It further claimed that its mark is notoriously well known in Brazil to identify clothes and clothing accessories, and that the defendant was diverting plaintiff's clients, as it was selling articles of clothing, imported from Italy, with the illegally reproduced mark PRADA.

The State Court of Sao Paulo found in favor of the...