Brazil: Infringement Despite Distance: The Bosembecker Case

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In a judgment handed down on December 10, 2014, the Fifth Panel of Rio Grande do Sul’s State Court of Appeals found the mark of the defendant, Bosembecker e Cia Ltda, confusingly similar to the mark of the plaintiff’s, Bosembeckertur Agência de Viagens e Turismo Ltda’s, registered service mark BOSEMBECKER (trademark registration No. 826179452). The court ruled that the defendant’s practices constituted unfair competition against the plaintiff (Proceedings No. 0345198-89.2014.8.21.7000, Dec. 10, 2014).

Bosembecker e Cia Ltda (the defendant) argued that the two signs (BOSEMBECKER and BOSEMBECKER SANTA VITORIA DO PALMAR) were dissimilar and that there was no likelihood of confusion among the relevant public because Bosembeckertur Agência de Viagens e Turismo Ltda (the plaintiff), would be marketing its travel agency services in a different city, approximately 150 miles away from the city where the defendant is based. The defendant emphasized that it had never advertised its services in the plaintiff’s city and to its public, and that it had never had any customers from the plaintiff’s territory, because, from the defendant’s point of view, there was no competition between the litigants, i.e., no unfair competition could possibly take place.

Judge Fabiane Borges Saraiva from the First Instance Court of the City of Santa Vitória do Palmar, accepting the defendant’s arguments, held that the marks were not confusingly similar in view of the difference between the signs—the defendant’s sign included the name of its city, and, most importantly, the litigants were marketing their services in separate cities, each one having its own public.

However, Justice Isabel Almeida, from the Fifth Panel of Rio Grande do Sul’s State Court of Appeals, upheld the plaintiff’s appeal, finding the marks shared a high degree of similarity and were likely to confuse consumers. She also confirmed that it was not disputed that the services were identical. Justice Almeida pointed out that the geographical factor alone did not address the matter properly and in fact did not itself avoid competition and the possibility of confusing the public. She explained that, with the Internet and globalization, the geographical approach is not sufficient to assess the likelihood of confusion and whether the parties are competitors—especially when the services are related to travel and tourism. In fact, the geographical factor would weigh in favor of the plaintiff, as both cities are located in the south region of the State of Rio Grande do Sul. Justice Almeida indicated that all the relevant factors must be taken into consideration, and, based on those factors, the defendant should refrain from using a confusingly similar sign and also from engaging in unfair competition practices against the plaintiff.

The defendant is now attempting to appeal to the Superior Court of Justice.

 

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