At the end of 2010, the Brazilian Patent and Trademark Office (“BPTO”) published its New Trademark Guidelines, whose objective is to provide clearer interpretation on the registrability of trademarks vis-à-vis the statutory provisions of the Brazilian Industrial Property Law. These Guidelines replace the provisional Guidelines that, despite the reference to their provisional nature, remained in force for approximately 13 years.
The current Guidelines largely follow the lines of interpretation set out in the earlier Guidelines. Some points, however, are worth highlighting:
a) Sound, smell and taste signs
The BPTO has consolidated its position regarding the impossibility of registering sound, taste or smell signs, based on the grounds that these signs are not visually perceptible, as required by Article 122 of our IP Law. In our view, which is in line with a considerable part of the national doctrine , this interpretation is mistaken. For us, the meaning of Section 122 is that, for registration purposes, a trademark must be expressed visually and in a precise way. A different interpretation would lead to a disturbing gap in a world that is constantly transformed by new digital technology. It would also divert from modern international practices established in decisions by the European Court of Justice (ECJ), by the United States Patent and Trademark Office and by OHIM.
b) Advertising Expressions (slogans)
The BPTO still maintains a restrictive position with respect to the registration of signs that can be taken as advertising expressions (“slogans”). This subject has been widely debated over recent years, and it is in fact covered by Resolution 38 of the Brazilian Association of Industrial Property (ABPI) which concluded that the BPTO cannot reject an application for a trademark registration preemptively on the assumption or suspicion that it may be used in the future solely as a sign, phrase or advertising expression.
c) Signs of a generic, necessary, common, ordinary or simply descriptive nature
The BPTO did well to emphasize that this restriction will only apply when the sign has a direct and immediate relation with the relevant products and services. If the relation is indirect and tenuous the restriction will not apply. In essence, the BPTO seems to be susceptible to apply the “imagination test” developed in the United States. According to this test, a trademark is suggestive and, therefore, registrable, whenever it requires imagination, thought and perception from the potential purchaser to reach a conclusion about the nature of the products or services involved.
d) Letters of consent and coexistence agreements
For many years the BPTO maintained a stringent position against the recognition of agreements entered into by private and independent parties that had the aim of allowing the coexistence and simultaneous registration of their respective trademarks. Defeated in various lawsuits, the BPTO has eventually adopted a more flexible interpretation. Section 124, item XIX of the Brazilian IP Law determines that a sign that imitates or reproduces a trademark registered by a third party covering identical or similar products or services is unregistrable. The 1997 Provisional Guidelines established that this restriction could be removed whenever the titleholder of the senior mark provided express authorization to the registration of the junior mark and as long as these marks did not cover identical goods or services.
More recently, however, the situation started changing again. Part of the BPTO has adopted the view that coexistence agreements and letters of consent are unacceptable since the coexistence of identical or similar trademarks could result in confusion for consumers and thereby would be against the public interest. There was a strong drive to include a rule explicitly prohibiting agreements of this nature in the New Guidelines. However, the opposing positions of the Brazilian Intelectual Property Association and of a significant portion of the BPTO itself, resulted in a conciliatory solution by which the New Guidelines simply did not establish any rule on this matter. In short, the New Guidelines no longer cover this important matter.
Our understanding, having been expressed on many differing occasions, is that this matter is eminently private, not being appropriate for the BPTO to prohibit coexistence agreements as long as the relevant parties have opted for this route, based on an agreement made in good faith.
The New Guidelines represent an effort by the BPTO to settle, standardize and promote the process for the assessment of trademarks and the granting of registrations. However, as can be seen throughout this text, important issues received a very stringent and therefore questionable treatment.