BPTO announces it will now accept trademark applications with advertising elements

BPTO announces it will now accept trademark applications with advertising elements

On October 30, the Brazilian Patent and Trademark Office (BPTO), through its director of Trademarks, Industrial Designs and Geographical Indications, announced that it will now accept trademark applications that contain advertising elements (slogans). According to the BPTO, the new interpretation can be taken from item VII of art. 124 of the Industrial Property Law – IPL (9.279/1996) and the Trademark Manual will be updated in November.

The news brought by the BPTO comes in the wake of an important decision handed down by the 3rd Panel of the Superior Court of Justice (STJ) in August, in which it authorized the registration of a trademark that included an advertising slogan. In the decision, the STJ gave a broad interpretation, recognizing that although slogans are advertising in nature, they can also exercise a distinctive function when associated with the product or service in an original and exclusive way.

In the presentation made during the announcement, the BPTO states that IPL’s Article 124, item VII does not apply to signs capable of simultaneously exercising a distinctive function and an advertising function. Here, they bring up 2 examples of registrable slogans to note that: “although the expression aims to persuade the interlocutor, its meaning is broad enough not to be limited to praising or promoting the services claimed” and ‘although the expression conveys a positive idea about the service, its structure presents elements with more than one meaning, resulting in a set with sufficient distinctiveness to act as a trademark’.

In addition, the BPTO, in the proposed change to its Trademark Manual, points out that: “since the trademark has the intrinsic function of identifying or distinguishing products and services from other similar ones, of different origin or not, it carries within itself the function of a means of social communication. For this reason, the application of item VII of art. 124 of the LPI must be judicious, being applied only when the exclusive advertising function of the sign is evidenced.” On the other hand, the manual also explains that “the sign will be considered devoid of a distinctive character, being used only as a means of advertising, when it corresponds to: an advertising expression that has become in common use in the market segment; or an advertising expression devoid of a minimum degree of originality, being exclusively descriptive, comparative, promotional or complimentary of the quality of the products or services indicated or of the conditions in which they are offered”.

Finally, the BPTO points out that, with the change, the rejection of the application for registration under item VII of art. 124 will only occur when the sign as a whole meets two cumulative conditions: (i) it performs an advertising function; and (ii) it is incapable of performing a distinctive function.

The BPTO presentation can be accessed via the link: Registro de Marcas com Slogan – Nova interpretação do inciso VII do art. 124

Note: For quick release, this English version is provided by automated translation without human review.