BPTO updates guidelines for registering trademarks with advertising elements

BPTO updates guidelines for registering trademarks with advertising elements

On November 27, the Brazilian Patent and Trademark Office (BPTO) officially published in its Trademark Manual the new rules for registering trademarks with advertising elements. According to the BPTO, from now on it will be able to accept trademark applications that include these elements and that fall within the new guidelines published. The change in the Trademark Manual reflects a new interpretation of item VII of article 124 of the Law 9.279/1996, the Industrial Property Law (IPL) which previously prohibited the registration of signs or expressions used only as a means of advertising.

 In the Manual, the BPTO first points out that the prohibition established by item VII of art. 124 of the IPL, which states that “a sign or expression used solely as a means of advertising” cannot be registered as a trademark, must apply to signs that are incapable of being perceived as a trademark by the consuming public due to their exclusive role as a means of advertising. In this way, it explains that the application must be judicious, being applied only when the exclusive advertising function of the sign is evidenced.

Further on, the BPTO explains that rejection under item VII of art. 124 of the IPL will only occur when the sign as a whole meets two cumulative conditions: performing an advertising function; and being incapable of performing a distinctive function. At this point, the manual indicates 1 that the advertising function is exercised when a sign: recommends the products or services marked; discloses qualities of the product or service marked; conveys the company’s mission, values, ideas or concepts; aims to persuade the interlocutor in order to lead them to action; or highlights the product or service marked in relation to the competition.

Thus, the guidelines state that the sign that performs the function of advertising will be considered devoid of distinctive character and rejected on the basis of item VII when it corresponds to: an expression that has become in common use in the advertising sector; an expression that is exclusively descriptive, comparative, promotional or praising of the quality of the products or services being advertised or the conditions under which they are offered; or an expression that is devoid of originality. Here, the BPTO also stresses that the assessment of originality will be carried out through research using internet search engines in order to establish whether the expression is already used in the segment by other competitors.

Finally, the Manual provides examples of unregistrable signs, as well as looking at the issue of sets capable of acting simultaneously as a trademark and as a means of advertising. In this sense, it states that these symbols do not fall under the legal impediment described in item VII of Art. 124, and can be classified into 2 categories: (i) the combination of distinctive elements with elements that perform only an advertising function; and (ii) the combination of elements capable of performing, at the same time, the distinctive function and the advertising function. In the second case, he points out that the use of artifices such as unexpected elements, word games or terms that admit of more than one interpretation can contribute to increasing the distinctive capacity of the combined sign.

The updates can be accessed via the link: Atualizações do Manual de Marcas

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