In the contemporary commercial landscape, a trademark transcends its basic function of identifying products or services to become a strategic element of communication and differentiation in the market. With the advancement of marketing practices and increasingly competitive markets, advertising expressions/slogans play an important role in building trademark identity. Recently, the Brazilian Patent and Trademark Office ("BRPTO") implemented a significant update in its guidelines, recognizing the importance of advertising expressions/slogans as a registrable part of trademarks. This change opens new possibilities for companies seeking to fully protect their intellectual property assets.
Before getting into the changes implemented in BRPTO's guidelines, it is important to understand the concept of a trademark and a slogan and their differences.
What is a Trademark?
A trademark is a distinctive sign that can be composed of words, figures, symbols, or a combination of these elements. Its main function is to identify and distinguish a company's products or services from those of competitors, ensuring the holder the exclusive right of use. The protection granted by the trademark registration is essential to prevent third parties from unduly benefiting from the recognition and reputation built over time.
The Role of an Advertising Expression/Slogan
An advertising expression or a slogan, by definition, is a short and impactful phrase created to convey a clear and memorable message about a product, service, or the company itself. It acts as a complement to the trademark, reinforcing its values, mission, and value proposition in a way that resonates with the target audience. According to the BRPTO trademark manual, a sign displays a promotional function when it:
- Recommends the designated products or services;
- Promotes qualities of the designated product or service;
- Conveys the company's mission, values, ideas, or concepts;
- Aims to persuade the interlocutor to act; or
- Highlights the designated product or service in relation to the competition.
With these concepts in mind, it is easy to understand that for an advertising expression or a slogan to perform a trademark function, it must necessarily identify and distinguish a company's products or services from those of competitors, avoiding the risk of confusion or association regarding the origin of the products or services.
Changes in the BRPTO's Guidelines
Historically, the BRPTO adopted a conservative approach regarding the interpretation of Article 124, VII, of Industrial Property Law ("IPL"), which prohibits the registration of "a sign or expression used solely as a means of advertising" as a trademark. Frequently, trademarks composed of phrases were classified as merely promotional expressions and, therefore, unregistrable as trademarks, even without an appealing role or written in other languages, when the targeted consumer could not understand the advertisement.
Examples of trademarks considered unregistrable by the BRPTO, based on Article 124, VII, IPL, include:
It is worth noting that some trademarks succeeded on appeal when they excluded the expression considered by the BRPTO as an "advertising" expression or when they effectively proved that the expression was used as a trademark, presenting the necessary documents.
However, with the evolution of branding practices and the growing importance of slogans in corporate identity, the need for changes in this approach became inevitable.
Thus, on Nov. 27, 2024, the new BRPTO guidelines came into force, reflecting a broader and more modern understanding of the role of slogans in trademark building. From now onwards, advertising expressions or slogans that demonstrate distinctiveness and originality can be registered as an integral part of a trademark.
As the legal basis for this change, the BRPTO interpretated Article 124, VII, IPL, by considering that the prohibition applies only to signs incapable of being perceived as a trademark by the consumers due to their exclusive function as a means of advertising. In other words, the refusal under item VII, of Article 124, IPL, will occur only when the sign meets two cumulative conditions:
- It serves an advertising function; and
- It is incapable of serving a distinctive function.
For an advertising expression or slogan to be considered registrable in this scenario, it must not limit itself to a mere promotional expression. This means that it must be composed of elements of originality or be associated with a distinctive element, such as the house mark itself, ensuring the ability to unequivocally identify the origin of products or services without infringing any other legal prohibition. On the other hand, a slogan will be considered incapable of performing a distinctive function when:
- it is of common use in the advertising segment;
- it is an expression exclusively descriptive, comparative, promotional, or laudatory of the quality of the designated products or services, or of the conditions under which they are offered; or
- it lacks originality.
Accordingly, the BRPTO will analyze trademarks composed of slogans in more detail, considering the overall impression of the trademark, including the combination of all its elements (word and figurative).
Regarding cases already rejected that are still within the appeal period, or those that have had a negative decision at the appeal level and are still within the period for submitting a reply on the opinion issued at the appeal level, the BRPTO's trademark director advises to file an appeal or file a brief based on the new guidelines requesting the reassessment of the merits of the trademark application. As for cases denied for which the appeal deadline has already expired, it seems relevant to consider re-filing the trademarks.
The new BRPTO guidelines represent a significant advancement in the intellectual property framework of Brazil, more specifically with regards to trademark protection, aligning the country with international practices where advertising expressions or slogans are recognized as registrable elements. By recognizing advertising expressions or slogans as registrable trademarks, the BRPTO not only expands the scope of protection for title holders, strengthening trademark identity, but also provides a competitive advantage by ensuring that distinctive slogans are not used by competitors. This change requires companies to revisit their intellectual property strategies, ensuring they are aligned with the best trademark protection practices in Brazil
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.