Slogans under current law

Under the previous Code of 1971, specific registrations could be filed for slogans designed to promote, to encourage the purchase of goods or the contracting of services.

Given the nature of these slogans, which have external visibility independent of the goods or services and are instruments for building goodwill, with a distinctiveness that frequently stems from commercial or industrial use, the Brazilian Patent and Trademark Office (INPI) encountered at the time enormous difficulties in applying the specialty and intrinsic distinctiveness principles characteristic of the trademark area. Numerous legal claims concerning the matter were filed by applicants unsatisfied with denial of their slogan’s registration.

The current law does not resolve the issue: passed in 1996, the law offered the simplistic solution of suppressing the problem by prohibiting, in Article 124, Subparagraph VII, the registration of slogans employed only as advertising tools. This left these slogans ineligible for special treatment and subject to other rules of law, the application of which requiring examination on a case-by-case basis, most notably copyright law and rules that check unfair competition.

The solution seems to be inadequate, generating legal uncertainties and turning the issue over to the already overburdened judicial system.

A reasonable proposal would be to have a declaratory registration to set a date, establishing presumption until the contrary is proven.

There are also difficulties interpreting the rule in the above-mentioned Subparagraph VII of Industrial Property Law Article 124, which prohibits the registration of slogans employed only as advertising tools. An impasse arises, because the law does not require use as a condition for registration, but only requires proof subsequent to registration at the request of third parties. Some argue that the law introduces a specific exception, but systematic review of the IPL does not seem to us to lend itself to this conclusion. Therefore, the solution would be for the INPI to require proof of use only in the event of challenge after the mark has been registered and the five-year grace period to commence use has elapsed.

Since the law has taken effect, the INPI has systematically denied applications to register slogans that the examiner deems appropriate for use as advertising tools and not as distinctive slogans for goods or services. In the few decisions handed down at the appellate level, the agency has reversed denial orders when convinced by evidence introduced to the records that the slogan in question was effectively used in a typical trademark context, such as in the case of the expression "I CAN´T BELIEVE IT’S YOGURT". (Order dated 04/22/1998, in Case Docket No. 817 332 641.)

Therefore, to date there is no clear outcome for slogans that are not yet in use, nor has the INPI established rules regarding any slogans incorporated into logos that constitute trademarks. These unresolved issues are likely to come to the forefront in the near future as the reviewing of cases accelerates following an INPI announcement that it would take measures to reduce its backlog.