Three Dimensional Trademarks in Brazil: New Trends

The study of 3D trademarks is nothing new in Brazil, but it has grown in importance since the enactment of the Industrial Property Act of 1996 – which formally provided for their registration for the first time. In the last few years, however, interest in this matter has greatly intensified. An increase in the examination of 3D trademark applications under the new legal regime and numerous discussions on new "Guidelines for the Examination of Trademarks", to supersede the "Provisional Guidelines", published by the Brazilian Trademark Office (BPTO) in 1997, has placed this topic back under the spotlight.

The previous statute of 1971 formally prohibited the registration of the "shape and packaging of a product" The law of 1996, on the other hand, simply limited trademark registration to "visually perceptible signs", only forbidding "necessary, usual or common shapes of the product or packaging, or even, that which cannot be dissociated from technical effect".

Despite this new legal scenario, practical difficulties in examining this type of trademarks significantly deferred the discussions about examination criteria for these applications for some time. Also, the considerable backlog in the examination of applications at the BPTO, mainly between the end of the 1990s and the first few years of the new millennium, helped delaying an open debate on the topic.

Indeed, an analysis of the early decisions by the BPTO, mostly between 2001 and 2005, reveal a certain inconstancy, particularly in relation to the degree of distinctiveness of a 3D mark and its association, or not, to word and design elements. This applied as much to shapes of containers (like bottles, jars and packaging), as it did to the product itself.

In the last five years, however, there has been a definite tendency to restrict the granting of protection through registration for this type of trademark. Their examination has been carried out with enormous rigor – the degree of distinctiveness required often being unreasonable, and there being no differentiation, once more, between containers and product shapes.

This has been likely motivated by recent harmonization in the understanding of the BPTO regarding the definition of a 3D trademark. Although the law does not define what a "three dimensional trademark" is, some examiners seem to be of the opinion that this sign can only be examined by disconnecting any type of figurative or nominative element or colors put onto it. Only the 3D shape seems to be considered and often an extremely high degree of distinctive character and originality is required.

This type of examination, nonetheless, is not in any way founded in the IP law, which simply requires a "visually perceptible" sign. In fact, the IP law does not cite even by way of an example what can constitute a trademark.

Furthermore, unlike other countries, Brazilian law does not set different standards for the examination of 3D trademarks in relation to their purpose (product or container shape) and does not require acquired distinctiveness (secondary meaning) in either case.

Thus, it is entirely improper to forbid the registration of shapes associated with other elements that often only have a distinctive character when conformed to determined physical boundaries such as a 3D form. This is particularly applicable to colors and their combinations.

Finally, 3D shapes associated with letters and colors also constitute important tools against counterfeiting, especially in the field of pharmaceuticals. One cannot deny, for example, that the shape of some "tablets" and their colors are widely known by the population – and copied by counterfeiters. The protection of this "complex" set of elements becomes, thus, an important tool not just for trademark owners, but also for the health and customs authorities against this type of counterfeiting, which is probably the most perverse and damaging to the consumer.

For these reasons, a very conservative proposal relating to 3D trademarks in the future BPTO’s "Guidelines for the Examination of Trademarks" does not only isolate itself completely from the reality of the marketplace, but also dissociates itself entirely from the law in force.