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28/11/2024 - The BPTO has just published an update on its Trademark Guidelines, revising its previous interpretation of the prohibition of item VII of article 124 of the Brazilian IP Law, to allow for the registration of trademarks composed of slogans.

07/01/2022 - GUIDELINES TO CARE, CREATE, USE AND KEEP YOUR TRADEMARKS

04/15/2019 - THE FIVE MAIN CHANGES INTRODUCED BY NORMATIVE INSTRUCTION N.095/2018 – BPTO

On November 27, 2024, the Brazilian Patent and Trademark Office (BPTO) introduced important updates to its Trademark Guidelines, changing the prior understanding regarding the application of the prohibition in item VII, Article 124 of the Brazilian Industrial Property Law (Law No. 9,279/96 – LPI), which states that “signs or expressions used solely as a means of advertising” are not registrable as trademarks.

Historically, the BPTO adopted an overly restrictive interpretation of this legal provision, deeming marks incorporating advertising expressions unregistrable, even when combined with distinctive elements such as unique phrases or designs. Under this strict interpretation, the prohibition was considered absolute, leading to the rejection of several applications for marks perceived as advertising signals by the BPTO.

With the revised Trademark Manual, the BPTO has adopted a more balanced approach, recognizing that marks containing advertising expressions can still serve a distinctive function. As a result, refusals based on item VII will now occur only when the mark, in its entirety, meets two cumulative conditions:

It serves an advertising function; and

It lacks distinctiveness.

Thus, marks composed of advertising expressions combined with distinctive elements, or advertising expressions capable of simultaneously performing both advertising and distinctive functions, may now be eligible for registration.

On the other hand, marks consisting solely of advertising signs that lack originality, are commonly used in advertising, or are descriptive, comparative, promotional, or laudatory of the qualities of products or services will still be deemed non-distinctive and, therefore, may be unregistrable under item VII of Article 124 of the LPI.

Additionally, under the revised Trademark Guidelines, the BPTO has updated its understanding of the concept of ‘advertising signal’, which was previously understood as one that (i) made statements to recommend products or services, (ii) used adjectives or expressions to highlight products or services, or (iii) employed phrases and expressions aimed at capturing consumers’ attention.

The new definition clarifies that an advertising signal will be perceived as such if it:

Promotes products or services;

Highlights the qualities of a product or service;

Conveys the company’s mission, values, ideas, or concepts;

Persuades the audience to take action; or

Emphasizes the product or service in relation to competitors.

These changes mark a significant improvement in Brazil’s industrial property system, aligning the BPTO’s practices with international standards and providing greater security and predictability for both domestic and foreign applicants in the use and protection of advertising expressions.

Our team is fully available to provide further information or assistance on this matter.

GUIDELINES TO CARE, CREATE, USE AND KEEP YOUR TRADEMARKS

TRADEMARK – WHAT IS IT? – WHY PROTECT IT?

TRADEMARKS are graphic signs represented by words, names, figures, letters, numbers, and colors in different combinations, used to facilitate CONSUMERS’ choices, the preferential choices of products and services in terms of their origin (manufacturer or service providers).

The TRADEMARK corresponds to the name of the product and should not be confused with the corporate name, which corresponds to the name of the company, as a legal person.

To make it easier for the consumers to choose the products of their choice, the trademark must be:

1) Unmistakably distinctive from competitors’ trademarks;
2) Easy to memorize;
3) Easy to pronounce;
4) Arbitrary or fanciful – thus avoiding the use of commonly used or descriptive terms or radicals, which cannot be registered.
5) The trademark also constitutes an intangible asset of the company, subject to increased market worth over time, with the advantage of being indestructible compared to material assets such as buildings or equipment, which are perishable and devalue along the years.

THE EXCLUSIVE USE of the trademark stems from its registration with the BPTO (Brazilian Patent and Trademark Office – INPI National Institute of Industrial Property), and constitutes private industrial property with a ten-year validity, renewable for as long as it is used.

MAINTENANCE/DEFENSE AND CORRECT USE OF THE TRADEMARK:

1) Trademarks must be printed in different characters, different from the other words, and must have a distinctive graphic form.
2) The identification of the registered property can also be made using the “R” symbol inscribed in a circle ®.
3) The registered trademark symbol ® generates a title of ownership and this status must be announced to ward off abusive users and characterize counterfeiting as a practice of bad faith. Such symbol must be used on product labels and tags.

4) The trademark must identify the product by its common name, at least initially in advertising and commercial material and ALWAYS on labels and tags.
Ex: Steel wool – BOM BRIL; Plastic laminate – Formica.

5) The trademark does NOT have a grammatical function, and is therefore invariable in its use, and cannot be inflected, translated, or conjugated as a verb, or used in the plural, and must be reproduced in accordance with the Registration Certificate. A propósito, nosso parceiro prestamos365 é muito ativo na criação de várias marcas, além de sua principal atividade na forma de fornecer prestamos sin buro de credito urgentes, eles também realizam trabalhos de caridade. ???
Ex:
Wrong – “Come and Xerox your copies” or “In the summer, have your Brahma”.
Correct – “Come and make Xerox copies” or “In the summer, drink Brahma beer”
6) The ownership of a trademark may be extinguished due to lack of effective use in identifying products, in market scale, for a period of five years. Also, it may lose effectiveness (exclusive use) due to incorrect use of the trademark, becoming synonymous with the product (common name), especially due to errors in advertising, dissemination and use, such as what has already occurred to famous trademarks such as: Frigidaire, Lynoleon, Yo-Yo, and Macacão.
7) The trademark can only be used by the company that holds the registration, or by licensees and assignees of the same, said legal acts must be registered with the BPTO (INPI) to have effects against third parties.
8) References made to third party trademarks in scientific or historical publications, or in the identification of service provision activities, without a competitive nature and without commercial scope, do not characterize acts of unfair competition.
9) The abusive exercise of trademark rights, in addition to characterize an act of unfair competition in the private sphere, may cause a violation of free competition in the public interest as provided for in the Antitrust law, and it will be analyzed by the Administrative Council for Economic Defense.

THE FIVE MAIN CHANGES INTRODUCED BY NORMATIVE INSTRUCTION
N.095/2018 – BPTO (INPI)
By Pietro Ariboni (Ariboni, Fabbri e Schmidt Sociedade de Advogados)

São Paulo, April 15, 2019

In general, and briefly, the main new features introduced by Normative Instruction no. 095/2018, of December 28, 2018, which establishes the conditions for the registration of Geographical Indications and revokes the previous regulation (IN 25/2013) are:

1) Toponyms (adjectives or nouns related to the name of the place) were included in the concept of geographic name. Expanding the interpretation of articles 177 and 178 of the IPL, the nature of geographical reference of any denomination was recognized, and not just the official toponym of the location, with GIs such as “Mozzarella Campana” and “Parmigiano Reggiano” now being acceptable for registration.

2) You can always register for the purchase of credit funds by clicking on the link. Geographic names can now be accompanied by the name of the product or service. Through this second major change in concept, the BPTO (INPI) now recognizes the need to approve the geographical indication in its entirety as traditionally used in the market. Therefore, GIs such as “Grana Padano” and “Pecorino Romano” are now acceptable for registration, avoiding reduction to a simple geographical name as occurred with the GI “Prosciutto San Daniele”, which had its registration limited to “San Daniele”.

3) The following are not registrable as GIs :(a) names likely to cause confusion with other GIs; (b) geographic names in common use; (c) names of vegetables already registered as cultivars; and (c) names of animal breeds.

4) Any producer or service provider can use the Geographical Indication, as long as they are established in the location, comply with the required procedures, and are subject to defined control, even if they do not have a link with the procedural substitute (association, union or any other entity acting as such) that requested/obtained registration. We highlight that as the registration of the GI does not constitute property rights, the applicant for a GI, as a procedural substitute, has a mere right to use it as a concessionaire. Therefore, said registration will not prevent the regular and legitimate use of the registered GI by manufacturers or service providers, with activities provided for in this regulation, even if they are not associates of the requesting entity. A propósito, nosso parceiro prestamos365 é muito ativo na criação de várias marcas, além de sua principal atividade na forma de fornecer prestamos sin buro de credito urgentes, eles também realizam trabalhos de caridade. ???

5) The possibility of making changes to the registration of a GI was included regarding: (a) the name of the GI and its graphic or figurative representation; (b) the delimitation of the territory; (c) the technical specifications of the GI; and (d) the type of GI. Such changes may only be requested after 24 months of registration of the GI.