The Fourth Class of the Superior Court of Justice (STJ) has determined that the compensation by way of moral damages to be paid due the use of a similar brand, is calculated based on the values received with sale of products, without tax, production, transportation and labor expenses.
In case, the ‘Eslasta Industria e Comercio SA’, a manufacturer of mobile and similar products and the owner of 'Attiva' trademark, proposed an action against ‘ML Magalhães Industria e Comércio de Móveis SA, claiming that the ML, taking advantage of its prestige and tradition, put on market competing products using the term 'Activa', inducing the consumer.
The first Judge determined that the ML to refrain from any use of the term 'Activa' in any way, including graphically, alone or associated with any expression that resembles the mark 'Attiva', under penalty of daily fine of $ 500. Furthermore, ordered ML to pay, in order to compensate moral damages, the amount received by the sale of furniture under the brands 'Activa' or 'Mlactiva', discounting the taxes, from 1999 to November 2000, and title damage, the payment of the amount of R$ 20 mil.
The Court of Rio de Janeiro, when deciding about the appeal, maintained the sentence. When the case came to STJ, ML claimed to be impossible to assume the existence of material damage, which is why it is necessary that the injured indicates, in effect, the real benefits that the company stopped obtaining.
According to the rapporteur of the case, Minister Luis Felipe Solomon, in the case of misuse of the mark, in order to cause confusion to consumers, STJ prevailing understanding is that the mere violation of the owner’s rights implies the obligation to pay compensation, without the need of the author to demonstrate that the selling of products, with brand identical or imitated, has caused degradation to the image of your company, or devaluation of its brand, preventing him from obtaining certain benefits.
Concerning the calculation of the compensation, the minister pointed out that it is acceptable which takes into account the profits obtained by ML, to be established in settlement of sentence.
"Even if the goods had been produced and sold by the holders of industrial property rights violated, the benefits received would be lower than the amount taken with the possible sale of products, given the costs of production, transportation, labor and other tax expenditures, "said the rapporteur.