A federal judge ruled that there is an industry pattern of similar packaging, which does not constitute unfair competition.
Federal judge Guilherme Corrêa de Araújo, from the 31st Federal Court of Rio de Janeiro, denied a lawsuit filed by Mondelez against the Pernambuco-based cookie company Capricche, over alleged imitation of the Oreo brand. The multinational company argued that the packaging of the “Futurinhos Black” cookies was repeating visual elements characteristic of Oreo, such as the blue packaging, the black cookie with white filling, and similar effects in the logo composition. However, the judge found that there is a market pattern of similar packaging, which does not amount to unfair competition.
The decision considered that, although the similarity between the products is undeniable, there are enough elements to distinguish the “Futurinhos Black” brand, from Capricche, and Oreo, from Mondelez. Araújo noted that other chocolate cookie brands with vanilla filling use the same design pattern, differing only in the shade of blue and other minor elements.
In filing the lawsuit, Mondelez claimed that the “Futurinhos Black” brand, registered with the National Institute of Industrial Property (INPI), had violated the rights of the Oreo brand, which is already established in the Brazilian food market. In response, Capricche argued that there is a prevailing market standard that allows the use of common graphic-visual elements.
According to the judge, the Federal Regional Court of the 2nd Region (TRF2) has already ruled on a similar case involving accusations of improper use of the Oreo brand by competitors. The decision emphasizes that the court has acknowledged a resemblance among chocolate cookie brands with vanilla filling, which does not constitute unfair competition, as there are signs that allow for distinguishing between the brands.
“The use of a black cookie with white filling, as well as the so-called splash milk effect, does not appear to be novel in this specific market. As indicated by the INPI in the statement from its technical department (Event 21.2, p. 4), there is a packaging pattern for such products that uses blue colors, black cookies with white filling, as well as the splash milk effect,” said federal judge Guilherme Corrêa de Araújo.
The judge pointed out that, at the federal level, the case is limited to the validity of the “Futurinhos Black” trademark registration with the INPI, due to alleged unfair competition. In addition to this lawsuit, which is proceeding in federal court, the multinational company is also seeking to prevent its competitor from using the brand in another case, which is ongoing in the State Court of Paraná.
Capricche’s attorney, Gustavo Escobar, stated that the ruling shows that not every visual pattern can be monopolized by a single brand, especially when there is a collective reference in identifying a product type. “The ruling reinforces that, in analyzing a potential conflict between trademarks, what matters is the impression created by the combination of signs. In this case, the distinction in the brand names was decisive in rejecting the claim of confusion,” he explained.
Mondelez was contacted but did not provide a statement by the time of publication. The space remains open.
The case is being processed under number 5097001-22.2023.4.02.5101 at TRF2.