Brazil: How To Protect Weak Trademarks From The Legal Point Of View

The recent rejection by Brazilian PTO (INPI) of the well-known SELARIA brand of the famous luxury store chain, Richards, which belongs to Inbrands, reawakened debates on an old topic: what defines the strength of a trademark? In a bid to resolve this issue, we must bear in mind the idea that, according to legal doctrine, trademarks are categorized in line with their degree of distinctiveness and, in turn, their enforceability against third parties, and are classified as fanciful, arbitrary, suggestive or evocative, descriptive and generic.

Trademarks are regarded as strong when they have no relation to the product or service on offer on the consumer market. Examples of these kinds of trademarks are the fanciful ones which have no meaning and have been coined, such as HAAGENDAZS, and arbitrary ones which, despite having a meaning in semantic terms, have no link with the products the company has on offer, as is the case with APPLE.

Trademarks regarded as weak inspire an association with the products or services on offer, directly or indirectly, and are classified as follows: suggestive, descriptive and generic, depending on the kind of association. Descriptive and generic trademarks convey the product or service sold under their directly to the consumer name and, as they are regarded as weak trademarks, registration is forbidden by law. One example would be the use of the word TEA to designate a brand of "teas". This would be regarded as generic and could not be registered while the trademark FASTAPP for a brand of "apps for telephones" would be regarded as descriptive and could possibly not be registered.

As for suggestive or evocative trademarks, although they may be regarded as strong by Marketing professionals, they could be considered weak from the legal point of view. This is because these trademarks require a thoughtful effort by the consumer to associate them with the product/service on offer. (For example, this occurs with the IBIZA CLUB brand used for "nightclubs", referring to the Spanish island which is world famous for its parties.) However, their very presence on the market could lead to a misinterpretation by the public as a whole, as if they were generic or descriptive.

This inherent risk within weak trademarks becomes greater when the regulators of the Trademark Law (Judges or examiners from the National Patent and Trademark Office) are influenced by this kind of false premise. However, this does not rule out this kind of brand being registrable. This is exactly what is believed to have occurred in the dismissal of SELARIA, a brand which applies to various kinds of shoes and leather accessories.

In principle, this trademark should have been classed as suggestive, considering that there is no immediate link between the establishment where saddles for horses are sold or made, the definition of the Portuguese word "selaria", with shoes or leather accessories for humans. What does exist is a correlation between some places where leather products are usually used and those where saddlery products – i.e. "selarias" - are found. However, this association is not immediate. Despite this, the National Patent and Trademark Office (local acronym INPI) regarded this as a generic, common or descriptive word since another company had obtained the registration for the trademark SELARIA INGLESA ORIGINAL GOODS to sell "footwear, sandals, flip flops, shoes, belts, all made of canvas".

At that time the INPI used a rider in which the trademark could be registered providing it does not have the exclusive use of some or all the nominative elements, with the protection only valid for all the elements, whether covered by the rider or not, which form the trademark. As a result, the choice of the rider in the case in point made clear the INPI´s understanding that the word SELARIA would be weak for leather products and services, although there is still some controversy over this interpretation.

Therefore, in order to get round this grey area that surrounds the protection of weak brands, it is recommended that the following four guidelines that strengthen this trademark are followed:

  1. make a prior check to see if the proposed trademark has already been filed or registered by third parties;
  2. avoid any direct and immediate link between the trademark and the particular product/service;
  3. associate the weak trademark to a combination of distinct varied elements, such as individualized and bold logos and/or any other trademark that has been registered previously;
  4. Avoid forming phrases, in any language, composed of noun + verb + adjective or adjective + noun.

As shown, the protection given to a weak trademark is limited, particularly compared with the power of enforceability against third parties held by a fanciful trademark. Therefore, choosing to use this kind of trademark brings a great added risk as all the investment could lead to no monopoly being granted to it. Nevertheless, should you choose this path, the points listed above will help obtain the registration for a trademark regarded as weak although the individual terms involved may not be exclusive.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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