BPTO to allow registration of slogans as trademarks
In brief
On October 30, 2024, during a meeting led by its Director of Trademarks, Industrial Designs, and Geographical Indications, the Brazilian Patent and Trademark Office (BPTO) announced an important update: it will soon begin accepting applications for marks that include advertising elements, such as slogans. This policy shift will be reflected in the updated Trademark Guidelines, scheduled for release on November 27, 2024.
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 trademark under the BPTO’s interpretation. However, influenced by international practices and in alignment with trademark treaties 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:
a) Recommends the products or services it identifies;
b) Promotes the qualities of the product or service it identifies;
c) Communicates the company’s mission, values, ideas, or concepts;
d) Persuades the audience to take specific actions; or
e) 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.
