by Rodrigo Borges Carneiro
August 20, 2009
Companies around the world are increasingly adopting new ways to communicate the attributes of their brands to consumers. The concept of ‘brand experience’ goes beyond any magnetism that a mere name may have to encompass, among other things, sounds, smells and tastes. However, these creative signs do not always fit the legal definition of ‘trademark’. This is the case in Brazil where practitioners have to find alternative forms of protection.
This article reviews the protection requirements and the limitations regarding non-traditional marks in Brazil, as well as alternative forms of protection. It also considers slogans, as the criteria applying to their registration differ from those of traditional marks.
The basic requirement for the protection of a trademark is set out by Article 122 of the Industrial Property Law, which determines that any "visually perceptive distinctive sign", when not prohibited by law, is capable of registration as a mark.
Based on this provision, the National Institute of Industrial Property (INPI) has adopted the narrow position that a mark must be "directly" visually perceptible in order to be registered. Thus, INPI has denied registration to signs that are not visually perceptible but can be represented by visually perceptible forms, such as a written description (of a particular smell or taste) or musical notation.
All nullity actions must be filed before the federal courts as the Patent and Trademark Office must be named as a co-defendant.
In relation to sound marks, some companies have attempted to circumvent this narrow approach by registering word marks that represent a particular sound, as sounds themselves cannot be registered. For example, the words ‘PLIM PLIM’, which represent a sound mark used for many years by a local television channel, have been registered as a word mark. Such marks are protected in the same way as any other word mark, but INPI will not accept written descriptions or representations of a musical piece, a smell or a taste.
Although sound, olfactory and taste marks are not protected, INPI has been accepting registrations for other nontraditional marks that are capable of direct visual perception, such as holograms, position and gesture marks. Registration in these cases was achieved by filing design mark applications instead of trademark applications.
Motion marks can also be registered provided that the application is filed as a figurative design showing the desired movement. INPI will not accept a multimedia recording of the mark for registration.
Colour marks face a different challenge. The current Industrial Property Law prohibits the registration of colours and their names, except when arranged or combined in an unusual and distinctive manner. Therefore, INPI has denied registration of a single colour in abstract, but marks consisting of a combination of colours can be registered. Also, design marks consisting of a single colour can be registered as trademarks provided that the colour is not described in abstract and is positioned on the design (eg, a blue rectangle on the sole of a shoe).
The prohibition also applies to colour names. These may not be registered unless they are used in a distinctive manner for products or services that are not related to the colour itself. For instance, the word mark VERDE LIMÃO (LIME GREEN) cannot be registered for limes, but it could be for services.
Three-dimensional marks are registrable in Brazil. The requirement of direct visual perception is not an issue. Applications for three-dimensional marks have to contain different views (in perspective, front, back, upper, lower and side views).
As with any other mark, threedimensional signs must be distinctive and, thus, necessary, common or usual shapes of a product or of its packaging are not registrable.
Further, shapes that cannot be disassociated from a technical effect are not registrable as three-dimensional marks. The INPI Patent Department may help trademark examiners assess whether threedimensional marks would fall under this prohibition.
Packaging and product configurations have been registered as three-dimensional marks in Brazil. As use is not a pre-requisite for obtaining a registration, distinctiveness must be analyzed without requesting proof of secondary meaning, which is a difficult task for examiners. In any event, in a forfeiture proceeding it is possible to conceive the cancellation of a three-dimensional mark if there is no use of the sign as a mark capable of distinguishing and identifying the product or service in the market.
Conflicts between three-dimensional marks and industrial design registrations are possible. The law specifically prohibits the registration as three-dimensional marks of industrial designs owned by third parties.
Three-dimensional marks can indirectly protect certain aspects of a package or product which are tactile in nature, such as engravings and texture details. Further, three-dimensional marks can also be used to protect decorative elements of commercial establishments such as restaurants, banks and gas stations.
Although slogans are not commonly categorized as non-traditional marks, it is important to point out some particularities relating to their protection in Brazil.
First, the protection of slogans as trademarks is a matter of a great controversy in Brazil.
Under the previous Industrial Property Law, slogans were subject to a specific registration system separate from that for trademarks, albeit also managed by INPI. The current law has abolished the separate registration of slogans. However, it also prohibits the registration as trademarks of signs or expressions used only as a means of advertising.
This prohibition is not absolute. If the slogan functions as a trademark, it may still be registrable. The key consideration is the scope of use. If the slogan is used as a mark – that is, as a source identifier on commercial material – it would qualify for registration. If the slogan is used in advertisements only, then registration is prohibited.
The problem is that under the Brazilian system there is no obligation to begin the use of a mark until five years after the grant of registration, so that the examiner cannot request evidence of use for a mere application.
Moreover, trademark examiners have been systematically rejecting applications for marks consisting of more than three words where the examiners suspect that the expression can be a slogan. In some cases, even two-word, meaningful expressions can be considered to be slogans and, as such, rejected.
Many practitioners, including the author, believe that the law needs to change and that slogans should be protected as trademarks without additional requirements. In case a slogan is not used to identify and distinguish a product or service in a trademark fashion, it will always be possible to request its cancellation.
The Brazilian Association of Intellectual Property noted the problems that have arisen after the enactment of the current Industrial Property Law and issued a resolution aiming to serve as a guide. Resolution 38 expressly recommends that INPI should:
not reject an application based on the presumption of use of the slogan only as a means of advertising; and
Other types of mark worth commenting on are collective and certification marks, which can be registered under the current law. While a certification mark is used to attest that a product or service conforms with determined technical norms or specifications, notably with reference to its quality, its nature, the material used and the methodology employed, a collective mark is used to identify products or services originating from members of a given entity.
The registration of a collective mark may be requested only by a legal entity representing a group and able to exercise an activity different from that of its members. The registration of a certification mark can be requested only by a person without any direct commercial or industrial interest in the product or service being certified.
Geographical indications are subject to a separate registration system from trademarks. Accordingly, they cannot be registered as trademarks, or collective or certification marks.
Literary, artistic or scientific works, as well as titles protected by copyright cannot be registered as trademarks without the consent of their author or copyright owner. However, INPI traditionally views titles of periodic publications or of a series as capable of being registered as trademarks. Individual works are generally not protected as marks as they are not perceived as trademarks but as mere titles of the work.
Isolated letters, digits and dates are also barred from trademark registration, except when sufficiently distinctive. The prohibition concerns the numerals 0 to 9 and all the letters of the alphabet in Portuguese or any other language. The prohibition for dates applies to complete dates (eg, December 25 2009) but will not extend to partial dates (eg, December 25).
Finally, in all cases where trademark protection is not possible, alternatives can be considered to curb possible infringements. For instance, unfair competition law provides residual protection. The protection against acts of unfair competition is commonly used in cases involving trade dress and could easily be adopted to prevent the use of a similar slogan by a competitor, for example.
The remedies readily available against unfair competition practices include:
Copyright protection can also be considered in some cases. Original titles of works receive copyright protection if they are not subject to confusion with another work of the same genre previously published by another author.
An original slogan could in theory also receive copyright protection, as could original decorative or ornamental designs.
In sum, even though non-traditional signs are not always registrable as trademarks, they normally enjoy a degree of protection or enforceability against third parties. The creativity of the legal practitioner will be paramount in protecting such signs and, more often than not, an in-depth analysis of the actual mark, together with its context of use, will be essential for the proper assessment of the chances of success in a proposed protection or enforcement strategy.