The Brazilian Patent and Trademark Office (BPTO) recently announced it will begin to interpret item VII of article 124 of the Brazilian Industrial Property Law – LPI (Law 9,279/96) differently, allowing the registration of trademarks with advertising elements (slogans).
This update marks a significant change in how trademarks composed by slogans will be analyzed and potentially registered by the BPTO, provided they meet certain conditions of distinctiveness and originality.
What does the Law states and how the BPTO will analyze this new possibility?
Item VII of article 124 of the LPI prohibits the registration of trademarks that consist exclusively of advertising expressions. According to this article, the target is to ensure that trademarks have a distinctive character and do not merely work as mere advertising slogans without the capacity to differentiate products or services in the market.
However, according to this new interpretation, the BPTO will now accept the registration of trademarks composed by slogans, as long as these slogans present some degree of distinctiveness and do not limit themselves exclusively to advertising purposes. The updated understanding, observing article 6quater of the Paris Convention, to which Brazil is a signatory, states that the rejection of a trademark containing an advertising expression will occur only if the sign, cumulatively:
- Exclusively shows an advertising function;
- Is incapable of fulfilling a distinctive function, meaning it does not add value to the unique identification of the product or service in the market.
The advertising character in a trademark is observed when the sign is used to promote or enhance the value of a product or service, seeking to change consumer perception and behavior.
At the same time, a sign lacks a distinctive function when its advertising expression is commonly used in any market segment, making it unable to differentiate a product or service from others (i.e. “THE CHEAPEST IN BRAZIL”).
A New Path for Trademarks with Slogans
This flexibility in the registration of slogans opens up new possibilities for companies seeking to protect creative slogans as brand assets. The direct benefit lies in the expansion of legal protection for expressions associated with companies’ branding, increasing legal security and enhancing their trademarks value in the market.
With the rise of trademark sets composed of registrable slogans, innovative trademarks will be able to communicate their messages more integratedly with their identity, without losing exclusivity concerning their competitors. This practice is already observed in other countries and can strengthen the competitive landscape in Brazil, allowing creative and distinctive slogans to be protected as intellectual property assets.
In summary, the relaxation of the interpretation of item VII of article 124 of the LPI represents a significant advance for trademark registration in Brazil, aligning with best international practices and strengthening trademark protection in the country. Its impacts will reflect in the greater protection of intangible assets and encouragement of innovation.
