The multinational Whirlpool, owner of the KitchenAid brand and several other famous brands in the home appliance segment such as Brastemp and Consul, is suing Philco for unfair competition and alleged illicit industrial property violations of KitchenAid's "Artisan" line of mixers. The lawsuit is pending in the 2nd Business Court and Arbitration Conflicts Court of São Paulo, where Whirlpool claims that the Brazilian competitor imitates 7 basic characteristics of the design (trade dress) of the brand's mixer.

In the initial petition, Whirlpool brought as an argument an opinion poll, carried out by IPEC, in which it could be seen that 47% of the interviewees understand that the mixers are very similar and that they could be confused. The same survey showed that 76% of consumers relate the mixer model in question directly to the KitchenAid brand when stimulated by the image. It requested, in preliminary injunction, the collection of products and advertising material existing in the market. The magistrate, in the first degree, decided to reject the request, understanding that he could not withdraw the Brazilian company's products from circulation without prior expertise with a specialist trusted by the court.

The trade dress it is nothing more than the visual identity of the product or service presented to the public, the “dress” that makes the consumer immediately identify its origin and differentiate it from other competitors. Although not regulated by Industrial Property Law (Law No. 9,279/1996), the set-image of products and services (trade dress) is subject to legal protection when the use of a similar set results in an act of unfair competition, that is, when there is confusion and/or association by consumers with competing products and services.

Philco defends itself by claiming that the only similarity between the mixers is only the red color, which would not characterize an imitation of the trade dress, because for it to be considered undue imitation, it is necessary to associate several design elements together. It also mentions that the protection by trade dress it applies to everything that is not protected by trademark, industrial design and patent.

Pursuant to art. 95 of the Industrial Property Law, an industrial design is considered to be the ornamental plastic form of an object or the ornamental set of lines and colors that can be applied to a product, providing a new and original visual result in its external configuration and that can serve as a industrial manufacturing type. Industrial design brings a new appearance to the product, a new form that does not increase the usefulness of that product itself.

If the consumer, an ordinary person, buys a product thinking he is buying another, there is evident industrial design counterfeiting, which is what the Whirlpool company claims. However, from the moment the mixer was created, Whirlpool did not register the industrial design in Brazil with the National Institute of Industrial Property - INPI, making its thesis have to be guided only by the image-set institute. In fact, who owns the registration on the plastic shape of the mixers in question in the form of Industrial Design is Philco itself, which received the concession in 2018, even before starting to market the line in 2019.

In order to be able to protect the design of a product, it is necessary, as long as it is new and original, that it be deposited with the INPI as soon as it is created. Not even the largest companies, such as Whirlpool, will be protected by the Industrial Property Law if they neglect to register their mill in Brazil.

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CPDMA Team - Intellectual Property