In more detail
Historically, Article 124, item VII, of the Industrial Property Law (Law No. 9,279/96 – LPI) barred registration of “sign or expression used solely as a means of advertising” as a trademark according to the BPTO’s interpretation. However, influenced by international practices and in alignment with trademark treaties to which Brazil is a party, the BPTO has now decided to broaden its view to permit the registration of certain advertisement elements as trademarks.
Under the proposed update to the BPTO’s Trademark Guidelines, a mark containing advertising elements will only be rejected on this basis if it meets both of the following criteria: (i) it performs an advertising function, and (ii) it is incapable of performing a distinctive function as a source identifier.
The draft further clarifies what constitutes an “advertising function”, providing that a sign meets this criteria if it:
- Recommends the products or services it identifies;
- Promotes the qualities of the product or service it identifies;
- Communicates the company’s mission, values, ideas, or concepts;
- Persuades the audience to take specific actions; or
- Highlights the product or service in relation to competitors.
This development represents a major step forward, aligning Brazil’s trademark policy with international standards and creating new opportunities for businesses seeking to protect the value of their advertising elements.
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Trench Rossi Watanabe and Baker McKenzie have executed a strategic cooperation agreement for consulting on foreign law.
