November 2024

Companies looking to protect their unique and memorable expressions have new support from the Brazilian Trademark Office (INPI). INPI has recently revised its interpretation of Article 124, Item VII, of the Brazilian Industrial Property Law, now permitting the registration of advertising slogans as trademarks, provided they meet distinctiveness requirements. This policy update represents a significant development in the protection of intellectual property and offers new trademark opportunities for companies seeking to safeguard their brand expressions.

Expanded Criteria for Slogan Trademark Registration

Under the revised guidelines, INPI will evaluate whether an advertising slogan functions solely as a promotional tool or also serves to identify the origin of goods or services. If a slogan exclusively promotes, it may still lack the distinctiveness required for trademark registration. However, if a slogan meets distinctiveness standards and also acts as a source identifier, it may now qualify for trademark status.

The updated criteria outline several characteristics of expressions considered primarily promotional, including those that:

• Recommend a product or service,
• Highlight specific qualities or attributes,
• Reflect the company’s mission, values, or concepts,
• Persuade or call the audience to action, or
• Distinguish the product or service from competitors.
• Emphasis on Distinctiveness Through “Originality”

A central factor in determining eligibility for trademark protection is the “distinctive character” of the expression. INPI has introduced the concept of “originality,” interpreted through exclusion, as a basis for assessing distinctiveness. Under this standard, a slogan will meet the originality requirement if it is neither descriptive, comparative, nor solely promotional or complimentary of a product or service’s quality or the manner in which they are offered.

Implications for Businesses

This policy update marks a substantial shift in Brazil’s trademark landscape and opens new avenues for companies previously unable to secure trademark protection for their slogans. Businesses with pending applications or previously rejected trademark requests now have the opportunity to seek reconsideration under these updated criteria.

INPI’s new approach to trademarking advertising slogans aligns with global trends in intellectual property, recognizing the importance of protecting brand assets that resonate uniquely with consumers. This change enables companies to better safeguard distinctive expressions that support their brand identity, marking a notable advancement in Brazil’s trademark policy.

In a public seminar on October 30, 2024, the Brazilian Patent and Trademark Office (BPTO) announced a change in its interpretation of Article 124, item VII, of the Brazilian Industrial Property Law (BIPL) – Law 9.279/96. This amendment will permit the registration of certain slogans as trademarks, a shift from the BPTO’s previous stance, which prohibited the registration of purely advertising expressions.

Historically, the BPTO has refused registration for phrases that serve solely an advertising function, without any distinguishing purpose to identify the origin of a product or service. Under the current interpretation, slogans such as “Amo muito tudo isso,” “So delicious dairy free,” and “Make the impossible possible” were denied, as they were deemed non-distinctive advertising expressions. Phrases that merely promote product qualities, convey a company’s mission or values, or encourage consumer action have been classified as lacking the distinctive function required for trademark status.

With this policy change, however, the BPTO will allow registration of slogans that possess an original and distinctive character, capable of serving as an identifier of product or service origin. Advertising expressions that remain merely descriptive, promotional, or without originality will continue to be refused under Article 124, item VII.

This revision aligns Brazil with many countries where trademark treaties permit slogan registration and reflects the BPTO’s acknowledgment of the growing importance of originality in brand expressions. Additionally, it recognizes the challenges companies face in protecting slogans through other legal means.

The new policy will take effect on November 27, 2024, and will apply to both new applications and those currently under review. Companies are strongly encouraged to consider registering their distinctive slogans to safeguard against potential third-party claims and ensure the exclusive right to use their unique brand expressions.

McCoy Russell is prepared to support its clients should this change impact their trademark strategies and portfolios. Contact us if we can be of assistance.

Bringing over two decades of expertise in trademark practice, McCoy Russell serves start-ups and iconic brands alike. The firm has developed cornerstones in well-known mark protection to trade dress and product configuration, as well as worldwide portfolio development and management as a part of its Trademark practice approach.

One of McCoy Russell’s key strengths lies in the development and implementation of a global protection and enforcement strategy for famous trademarks, leveraging the benefits of their extra protection. Clients appreciate the firm’s streamlined and cost-effective approach in establishing, maintaining, and defending well-known and famous mark status. McCoy Russell has actively contributed to the Famous and Well-Known Mark Committee for the International Trademark Association (INTA) for several years.

Trade dress is a significant focus for McCoy Russell, recognizing it as a valuable branding asset. The firm has extensive experience in developing and procuring global trade dress and product configuration protection. McCoy Russell has successfully aided in establishing product configuration protection for renowned consumer products both in the US and internationally, offering strategic counsel with a commitment to cost-effectiveness.

The firm’s trademark practice encompasses a wide array of services, including trademark searches, brand analysis, trademark filings, preparation of tiered strategic worldwide filing recommendations, brand due diligence, IP audits, review of branding agreements, assignments, renewals, in-house trademark training, and customs registrations. McCoy Russell is dedicated to pursuing filings and enforcement in over 130 countries, collaborating seamlessly with a network of trusted IP colleagues.

McCoy Russell continues to strengthen its Trademark and Branding specialty with active exposure to diverse perspectives, regulatory updates, and collaborative efforts with industry experts through volunteering in INTA. Please contact us at [email protected] if you think we can be of assistance.