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Newsletter August – I.P and Data Protection

20 / 09 / 2019

INTELLECTUAL PROPERTY

RIO DE JANEIRO COURT OF APPEALS (TJRJ) REJECTS A CLAIM REGARDING THE USE OF A THIRD-PARTY TRADEMARK ON GOOGLE SPONSORED LINKS

The 19th Chamber of Civil Law of the Rio de Janeiro Court of Appeals (TJRJ) decided that the fact that a competitor appears in Google’s sponsored results when searching for its competitor’s name cannot be considered as a trademark infringement and does not mislead the consumer.

The lawsuit was filed by Diagnósticos Laboratoriais Especializados Ltda. against Mendelics Análise Genômica S.A., seeking that the defendant ceased using the company name “Diagnósticos Laboratoriais Especializados” (“Specialized Laboratory Diagnostics”) and the trademark “DLE” as a search parameter on “sponsored links” in order to attract consumers.

According to the plaintiff, when performing a search on the internet with their brands or corporate name, the defendant’s official website appeared first in the results, in the “sponsored links” space.

The state court had already dismissed the lawsuit on grounds that the defendant had not caused any harm to the plaintiff, since their trademark was not depreciated. The state court judge relied on STJ’s case laws regarding comparative advertising to claim that the case was not about counterfeit or misuse of the trademark, but rather comparative advertising.

The plaintiff then appealed arguing that the ruling should not treat the case as comparative advertising, but as a trademark infringement and unfair competition, due to the use of the trademark as a search parameter in sponsored links.

The state appellate court ruled that there was no controversy regarding the defendant’s use of the term “DLE” as a keyword for search through “Google Adwords”, given that it would not be possible to extend the protection granted by the Brazilian Patent and Trademark Office (“INPI”) to the use of the term “DLE” on the internet search engine.

In the decision, the reporting judge also stated that although “DLE” is a trademark owned by the plaintiff, it is a generic term which can be used in many ways, and that the plaintiff does not have exclusive use of the term on the Google search engine.

 

Other case laws on this subject

Despite this decision, it is important to highlight that there are precedents in other Brazilian courts, including the Superior Tribunal of Justice (STJ – the highest court for non-constitutional matters), that recognize the illegality of this practice in certain situations.

In that sense, it is important to observe the intention of the company that hired the sponsored link, i.e., if the intention was to make the consumer believe that they were the trademark owner, causing confusion and/or mis-association.

That said, the only precedent of the STJ that analyzed the case of sponsored links, in 2016, decided that the mere mention of a trademark should not be considered as unfair competition.

In that case, the STJ ruled that the company “Hotel Urbano” (“Urban Hotel”) should refrain from using sponsored links when conducting searches with competitor’s term “Peixe Urbano” (“Urban Fish”) and other variations such as “Fish Urban Hotel”, “Fish Hotel”, “Urban Fish Hotel”, “Hotel Fish Urban”, due to the fact that there were other evidences of unfair competition, such as the use of the logo with the same fonts and colors of the brand “Urban Fish” and the layout of the site of the “Urban Hotel”, which was almost identical to that site of its competitor.

 

DATA PROTECTION

CONSTRUCTION COMPANY MUST REFRAIN FROM SHARING CUSTOMER PERSONAL DATA WITHOUT THEIR AUTHORIZATION

The lawsuit was filed by an attorney who claimed to be contacted by several companies that had access to their personal and sensitive data after buying a property from Cyrela, a Brazilian real estate market company.In August, the 13th Civil Circuit of São Paulo granted an injunction relief and ordered Cyrela to cease sharing personal data from its customers with third parties without their authorization.

According to the plaintiff, he shared several personal data with Cyrela for the acquisition of a property of the defendant, but he has never authorized the disclosure or transfer of his data to third parties which were not part of the contractual relationship.

The plaintiff also argued that the contacts started after the purchase of the property and that some vendors would refer to Cyrela’s property, so that there would be no doubt that the data was transferred to them by Cyrela.

According to the plaintiff, the act of sharing his personal data without his consent would violate several legal provisions, such as the Federal Constitution, the  “Compliant Debtors” law  (Federal Law 12,414/2011), the  Civil Internet Framework  (Federal Law 12,965/2014), in addition to the principles of the Brazilian General Data Protection Law (Federal Law 13,853/2019) and the Brazilian Consumer Protection Code.

In view of this, the plaintiff requested the granting of an injunction relief to order Cyrela to refrain from transferring plaintiff’s personal, financial and/or sensitive data to third parties without his authorization.

After the distribution of the case, Judge Tonia Yuka Koroku granted the injunction relief,  inaudita altera parte (without hearing the adverse party), based on the right of confidentiality of the personal data of the plaintiff, and determined a daily fine of three hundred reais, until the limit of one hundred thousand reais, in case of breach of the decision by the company.

In case of any doubts about this subject, please do not hesitate to contact us.

KEY CONTACTS:
Paula Mena Barreto
Partner
T: +55 21 3262-3028
E: paula.menabarreto@cmalaw.com

Manoela Esteves
Associate
T: +55 21 3262 3042
E: manoela.esteves@cmalaw.com

Thaissa Lencastre
Associate
T: +55 21 2217-2041
E: thaissa.lencastre@cmalaw.com