by Rafael Dias de Lima
June 01, 2008
When examining trademark applications, the BPTO considers the mark’s distinctive nature according to Industrial Property Law No. 9,279/96, Article 122. Even if the mark is approved, the level of actual protection will depend on its degree of distinctiveness.
Industrial Property Law Article No. 129 clearly states that trademark ownership is acquired through a duly issued registration, which guarantees the owner exclusive nationwide use. Even when a trademark is granted, companies must determine whether the mark has a strong or weak degree of distinctiveness so as to define its area of activity.
Doctrine classifies trademarks according to this degree of distinctiveness, using the term WEAK TRADEMARKS, also known as EVOCATIVE TRADEMARKS or SUGGESTIVE TRADEMARKS. These marks are associated with the product and/or service they are intended to identify, and their scope of protection is, therefore, reduced.
Precisely because of their indirect relationship with the product/service, analysis of distinctiveness and novelty is subject to more flexible criteria. The result is that graphically and phonetically similar, or even identical, trademarks coexist to identify the same products.
There is a subtle difference between weak trademarks and those not eligible for protection because they are considered generic, common, usual or merely descriptive (IPL Article 124, item VI).
But exactly how far does the protection of weak trademarks extend?
Weak trademarks are those with less distinctiveness when compared with fanciful trademarks, even if they may be registered. A large degree of novelty should not be attributed to weak trademarks, since that would allow a monopoly and put competitors at a disadvantage. Other trademarks must be allowed to use the same name together with other arbitrary elements. When creating their trademark from terms that immediately bring to mind the goods or services they wish to identify, businesspeople unreservedly accept that they must coexist with similar marks used by competing companies.
The words of the illustrious commentator, João da Gama Cerqueira, prove quite appropriate:
If a businessperson adopts this sort of trademark because it appears to be useful and beneficial in demonstrating the essential quality or composition of its product, he or she must accept, as a corresponding requirement to this advantage, the relative similarity of other trademarks to their own. – In "Tratado da Propriedade Industrial (Treaty on Industrial Property)”, Volume 2, page 819.
Given this situation, weak trademarks simply cannot be afforded the same degree of protection the law provides to arbitrary names. The validity or legitimacy of existing weak trademark registrations is not in question here, but rather the obvious limitations that this type of registration achieves. It is worth noting some decisions that reflect this understanding of the limited scope of protection of weak trademarks.
The following is from a decision handed down by the judge of the 28th Civil Court of São Paulo, in case No. 583.00.2004.019857-8, concerning parties Kraft Foods and Danone Ltda.:
(…) The expression FRESH has become common in the advertising world, as it expresses the idea that the product is fresh, just as the word’s translation indicates (…). Therefore, the plaintiff may not claim exclusive rights to use the word FRESH when it is used as an adjective. If such were the case, no one could use expressions such as light, soft, big, etc. I would concede the plaintiff’s argument if someone launched a product using exclusively the word FRESH (…).
The scale of the preceding decision is equal to the well-grounded decision issued by the Superior Court of Justice regarding the trademarks BANK NOTE and OFF PRICE:
Industrial Property – Registered Trademark BANKNOTE – generic name of a product Cancellation of registration unnecessary.
I – The trademark registered with the BPTO is generic in nature and closely associated with the product, so that companies in the same area of business may use it, provided it is in the common sense and combined with other identifying elements, there being no cause for exclusivity claims or cancellation of the registration through the appropriate channels.
It is worth noting this excerpt from the section signed by the Justice Minister Waldemar Zveiter in delivering his judgment:
Therefore, (…) the BPTO registration does not prevent other companies from using the expression BANK NOTE, in its common sense, combined with other identifying elements. This is not a case for cancelling the registration, filed through the appropriate channels, but it may serve as a comparative incident in cases like those in the judicial records where the exclusivity referred to in IPC Article 59 cannot be claimed. (…) the registration of the expression obtained by the plaintiff is maintained, so that it has exclusive use of it as a commercial trademark; however, the expression in its common and generic sense may be used by its competitors (…).
The aforementioned decisions show that in some cases legal precedence recognizes an owner’s right to exclusive use of a WEAK TRADEMARK, provided such use is isolated. This reinforces the assertion that protection of WEAK TRADEMARKS is limited, which allows identical trademarks to coexist peacefully with it provided they are complemented with other distinctive arbitrary elements.
The extent and limits of protection of WEAK TRADEMARKS should be definitively and thoroughly analyzed by the Judiciary on a case by case basis. The most important point is that businesspeople should be aware in advance of the limits of protection that are characteristic of WEAK TRADEMARKS.