Highlights on the Updated Brazilian PTO Guidelines for Trademark Examination
The Brazilian Patent and Trademark Office’s Directorate of Marks, as part of its efforts to improve quality of trademark examination and to standardize interpretation of Trademark Examiners during analysis of trademark related matters, issued on December 2012, an updated version of its Guidelines for Trademark Examination[i] previously issued in December 2010.
In this article, some of the topics whose approach and interpretation for examination were reviewed and updated are commented. They were chosen because of their importance for trademark owners and also because they reflect changes which will certainly affect the daily work of Brazilian trademark professionals and will affect prosecution of trademark applications and enforcement of trademark rights the Brazilian Patent and Trademark Office if not at Brazilian Courts.
? Right of Precedence
Traditionally, Brazil is a first-to-file country, but the Trademark Law of 1996 [ii] introduced one exception to this principle known as “right of precedence”[iii] according to which a person[iv] which has been using a trademark in Brazil in good faith, for at least six months prior to the filing of an application for a conflicting mark by a third party, has the right of precedence to obtain registration for the trademark in Brazil.
The amendment included in the updated Guidelines foresees that the right of precedence can be claimed exclusively in oppositions filed against third parties’ applicationsandcannot be claimed through the filing of administrative nullity proceedings against third parties’ registrations. Although this may seem to be a minor amendment, it plays an important role because it determines when the right of precedence can be validly claimed against a third party.
With this understanding, the PTO consolidated its position to the effect that the right of precedence can only be argued in the user’s favor before the third party obtains registration for the conflicting trademark (because in this case, the third party has already acquired rights over the trademark).
Future decisions issued by the PTO will confirm that this rule will be actually applied. However, it seems that rejecting a claim of right of precedence in administrative nullity proceedings is not the best interpretation of the provisions in the Trademark Law. The previous good faith user cannot be prevented from enforcing such right merely due to the fact that it has not opposed the third party’s application before it matured into registration. A prior opposition (or any kind of administrative objection) is not a legal pre-requirement for filing administrative nullity proceedings or court actions against third parties in Brazil. On the other hand, Brazilian Constitution guarantees the right to submit any matters to the Brazilian Courts and the Brazilian PTO’s restrictive interpretation of the time frame when the right of precedence can be administratively claimed will not prevent good faith users to bring the matter to courts.
It is worth mentioning that the PTO’s current interpretation is not totally supported by precedents of the Brazilian court. The 3rd Panel of Judges of the Brazilian Federal Court of Appeals of the 4th Region[v] has already decided “the right of precedence provided for in the 1st Paragraph of Article 129 of the Trademark Law, according to court precedents, can only be claimed before there is a registration in place and enforced during prosecution of the administrative proceedings with the Brazilian PTO”[vi].
The Brazilian Federal Court of Appeals of the 2th Region[vii], which decides the majority of the appeals dealing with trademark nullity matters[viii], already decided in the opposite direction, accepting the existence of the right of precedence as grounds to cancel granted trademark registrations (therefore, accepting the claim of the right of precedence after said registrations were granted and not only prior to their granting)[ix].
The 1st Panel of Judges of the Brazilian Federal Court of Appeals of the 2th Region has also reversed a trial court decision which did not sustain a claim of right of precedence against a registered trademark under the interpretation that such right should have been claimed before the registration was granted. In this case, the Panel decided that the trial court could not have rejected the claim due to the fact that the bad faith of the registrant was fully evidenced in the court proceedings. The Panel also decided that the trademark registration unduly obtained should be compulsorily transferred to the claimant provided that the claimant evidenced to the Brazilian PTO fulfillment of all the requirements to own the registration (the Panel further decided that a court of law should not substitute the Brazilian PTO in their role of Trademark Register)[x].
Due to the indefinite situation of this matter before the Brazilian Courts it is likely that the Brazilian PTO’s decisions rejecting a claim based on right of precedence against a granted trademark registration through administrative nullity proceedings will be challenged in court with a high level of unpredictability of the outcomes.
? Tridimensional signs which cannot be registered as trademarks
The following points in the updated Guidelines for Trademark Examination should draw attention of trademark owners and practitioners in relation to registrability of tridimensional signs:
a) The principle of stability of the form should be observed upon the analysis of tridimensional trademarks, meaning that signs relating to objects with a physical constitution that does not bear firmness and stability cannot be registered as tridimensional trademarks. Example: objects composed of an easily deformable material, such as a tooth paste.
b) Whenever analyzing a tridimensional mark Examiners should take it as a whole considering the plastic form of the object put in the market instead of analyzing isolated parts of the object. For instance, the cap of a bottle applied for on an isolated basis shall not be considered registrable, but rather the entire bottle.
c) Applicants of tridimensional marks must pay attention to the goods claimed in the initial application as such goods must be compatible with the form of the object. Consequently, depending on the physical constitution of the object it may not be possible to claim protection for all goods belonging to the class of interest. In other words, the plastic form of the tridimensional mark may bring a limitation to the goods to be identified by the mark.
Although in relation to the points indicated in letters (b) and (c) above we could not identify any Brazilian PTO’s decisions issued on such grounds, we could find two rejection decisions that can be considered rendered on the grounds lack of firmness and stability of the tridimensional object (depicting a slice of toothpaste) [xi]:
More frequently, the Brazilian PTO reject applications to register tridimensional marks on the grounds of an intrinsic association between the mark and the form and technical effect[xii] of the products covered by the applications and this appears to be inconsistent with the requirement now introduced by the updated Guidelines regarding the compatibility between goods covered by the application and the form of the mark.
First example below is a tridimensional trademark application for speakers rejected on the grounds of intrinsic association between the mark itself and the products specified in the application[xiii]. Apparently, in favor of the registrability of the mark one could mention that the form of the object is totally compatible with the goods specified in the corresponding application, which were “speakers for connection with mobiles, phones and computers”.
In an opposite direction, the Brazilian PTO granted registration[xiv] to the following tridimensional trademark:
However, this registration was challenged in court and, although the parties reached an agreement to settle the dispute, the 2nd Panel of Judges of the Brazilian Federal Court of Appeals of the 2nd Region sustained[xv] an order to temporarily suspend the effects and enforceability of the registration[xvi] and the Reporting Judge rendered a judgment which apparently was taken into consideration by the Brazilian PTO when issuing its updated Guidelines.
The relevant portion of the vote of the Reporting Judge stressed the limits of the protection granted by a tridimensional trademark registration and by an utility model patent[xvii] by stating that “(…) the technological innovation added to the ‘corpus mechanicus’ of the PHILISHAVE electric razor which consisted in a privilege granted for a validity term legally limited cannot be transposed into a perpetual benefit under the protection of tridimensional trademark registration validly and regularly obtained” to further conclude that “(…) consequently it is not registrable as a tridimensional trademark (…) the descriptive form of an utility model whose exploitation has already fallen into public domain due to expiration of its exclusivity term of protection”.
Again there is a high level of uncertainty not only in the provisions now introduced by the updated Guidelines by also in the existing court precedents. The rationale of the latter appears to have influenced the Brazilian PTO’s position in relation to the registrability tridimensional marks. At the same time, this rationale also apparently buried the concept that the design of a product which is in the market for a long time could acquire distinctiveness and obtain a tridimensional trademark registration in Brazil.
? Trademark Coexistence Agreements
According to the updated Guidelines, Trademark Coexistence Agreements[xviii] will only subsidiarily be taken into consideration by the Brazilian PTO Examiners, as an ‘additional element’ for the examination of trademark applications and of appeals against decisions rejecting trademark applications. This provision aims to encourage PTO Examiners to analyze potential conflicting trademarks with a view to protect the public interest, avoiding consumer confusion and misleading in the market place.
This Brazilian PTO’s orientation now included in the updated Guidelines seems to be not so new at all. It has always been clear to local trademark practitioners that the Brazilian PTO never had to compulsorily allow the coexistence of trademarks merely because a Coexistence Agreement executed by the parties was submitted.
Back in 1996, for example, a Coexistence Agreement was filed by SmithKline Beecham in support of its OXY CLEAN Application No. 817131604[xix], for “anti-acne medicaments” (Class 5), which was rejected by the Brazilian PTO due to the existence of OXYCLEAN Registration No. 815176996[xx] for “eye care medicaments” (Class 5), in the name of Allergan, Inc. The Coexistence Agreement was rejected by the Brazilian PTO and a lawsuit[xxi] was filed to reverse the rejection decision. Finally, the lawsuit was sustained and OXY CLEAN trademark registration was granted.
The updated Guidelines provides that Coexistence Agreements will now be accepted whenever the PTO Examiner is convinced that there is no likelihood of consumer confusion or consumer association between the junior and the senior trademarks[xxii]. Under such circumstances the PTO Examiner will not apply the relevant prohibitions of the Trademark Law and will allow registration of the junior trademark.
The Brazilian PTO may issue office actions whenever a Trademark Coexistence Agreement is being examined[xxiii], which may have the following objectives:
- to request limitation of goods/services covered by the application under examination. In cases where the PTO Examiner decides that the marks should not be allowed to coexist in view of the goods/services covered by the marks or in view of the nature of the marks themselves, limitation of the goods/services may eliminate the risk of confusion or association between the trademarks and convince the Examiner that the junior mark can be registered; and
- to request changes in the junior trademark, in cases where withdrawal of a certain element of the junior trademark will make it sufficiently distinctive from the senior trademark.
It is also inferred from the updated Guidelines that trademark Coexistence Agreements have to include a reasoning justifying the reasons why PTO Examiners ought to accept them in relation to a specific matter or, in other words, the reasons why the similarity between the marks or the goods/services covered by them does not represent a risk to the public interest (i.e. a risk of confusing or misleading consumers).
One thing is for sure: from now on, Brazilian PTO Examiners will be more parsimonious in accepting Coexistence Agreements and trademark owners and attorneys must be more careful when considering a Coexistence Agreement as an alternative to overcome rejection of trademark applications in Brazil, as well as more cautious when writing such documents because, depending on their terms, PTO Examiners will decide whether or not potentially conflicting trademarks can coexist.
? Propaganda Slogans and Signs
The Trademark Law currently in force eliminated the possibility of registering propaganda slogans and signs with the Brazilian PTO[xxiv]. The existing registrations by time the Trademark Law was enacted and entered in force where kept alive for the remaining of their validity terms and were automatically extinct with no renewal allowed after their validity terms elapsed. The pending applications where definitely declared abandoned, with no right to appeal, when the Trademark Law entered into effect[xxv].
Although it is usually agreed that propaganda slogans and signs are currently protected under copyright[xxvi] in Brazil and consequently protection is granted to them without any registrations, they apparently still resents or misses a special protection. This fact is understandable greatly because protection without registration, although may seem more practical, leaves owners with some degree of risk either when adopting new propaganda slogans and signs – the question being whether or not third parties’ rights may be infringed by the new propaganda slogans and signs – or when attempting to enforce their rights against third parties. Finally, although copyright registration in Brazil can be obtained and requested for some kind of works, local copyright registries[xxvii] tend to deny registration to such propaganda slogans and signs due to their utilitarian commercial use.
An issue of great concern for owners of propaganda slogans and signs and lawyers defending them is to evidence priority of use of such elements when the need to enforce rights over them arises. Other issue of great concern is the fact that without a specific registration granted by a public authority infringement lawsuits are not available to protect such rights, but only unfair competition lawsuits, in which stronger evidence is required to prove the existence of plaintiffs’ rights.
Besides the mentioned issues, there is a thin line separating what qualifies a word expression or a sign as a trademark or as a propaganda slogan. In fact, this line separates distinctiveness from lack of distinctiveness and this is the reason why it is very thin. As mentioned, Brazil is a first-to-file country where prior use[xxviii] is not relevant and cannot be argued to evidence distinctiveness of a given sign at the time its corresponding application as a trademark is filed. Distinctiveness can only be argued and occasionally evidenced if an application to register a propaganda slogan or sign as a trademark is rejected, but even so with very limited chances of succeeding and reverting the rejection decision. On top of all, it has also to be considered that Brazilian Trademark Law does not have any provisions dealing with acquired distinctiveness.
Consequently, the number of owners of propaganda slogans and signs that attempt to register them in Brazil as trademarks is still high. In an attempt to reduce number of such applications, the updated Guidelines dealt with this matter. However, the provisions contained in the Guidelines apparently are not clear enough to tackle the problem.
The Guidelines recognizes that “expressions used solely as a means to recommend, highlight and/or publicize products or services which will be covered by the sign applied for as a trademark” will not be registrable, but prohibition of registration under these grounds must be applied cautiously considering that a “trademark has the intrinsic role of identifying products and services from others in the market which is recognized as a function of social communication”.
The Guidelines further mentions some aspects of the signs covered by trademark applications that are to be considered by Examiners, because they tend to indicate that the expression or sign being examined is not actually a trademark, but rather a propaganda slogan or sign:
- An affirmation used as a means to recommend the product or service it identifies;
- Adjectives or expressions designed to publicize the product or service in relation to the competitors’; and
- Phrases or expressions which aim to attract consumers’ or users’ attention.
Although the intention behind the new criteria is good, the fact is that the criteria are not clear and some concepts are have been misled by the Brazilian PTO. For example, every trademark has the objective of attracting consumers’ attention and even more their attention over other competing products or services placed in the market and this should not be considered a characteristic only present in propaganda slogans and signs or indicative that the expression or sign is not registrable as a trademark.
A search for decisions issued by the Brazilian PTO in relation to applications carrying word elements which were preliminarily considered propaganda slogans revealed that in a total of 1,182 applications (from 2006 to 2013) only 1% was not rejected and registered as trademarks[xxix].
Court precedents relating to propaganda slogans and signs are very uncommon, but one decision rendered by the 3rd Panel of Judges of the Brazilian Federal Tribunal of 4th Region considered the expression “MENINA LINDA MEU JEITO DE SER (Beautiful Girl My Way of Being) as a registrable trademark due to its clear objective of identifying and distinguishing the products covered by the corresponding application”[xxx].
As a result, the uncertainty remains and it is likely that owners of propaganda slogans and signs will insist in attempting to secure their registrations in Brazil as trademarks, while local trademark professionals and practitioners advocate that propaganda slogans and signs should regain protection through a special registration.
The efforts that the Brazilian PTO is putting in place in order to make its decisions more consistent and transparent are remarkable. The publication of the updated Guidelines is a step forward in this direction, although the Guidelines still may have some inconsistencies, it is public and open to public scrutiny and this will certainly cause its improvement and completeness during the incoming years. This is critical for the Brazilian PTO to kill its backlog at the trademark side and also to adhere to the Madrid Protocol, which will likely benefit local trademark owners and will surely increase the number of applications filed and prosecuted within the Brazilian PTO.
[i] Resolution PR no. 28/2013.
[ii] Industrial Property Act – Law No. 9,279 of May 14, 1996, in this article referred to as Trademark Law. This Law entered into force on May 15,1997.
[iii] “First-to-file principle”: Article 129; and “right of precedence”: 1st Paragraph of Article 129, of the Trademark Law.
[iv] “Person” must be interpreted as an individual or entity that is allowed to applied for a trademark registration according to Article 128, of the Trademark Law.
[v] The Brazilian Federal Court of Appeals of the 4th Region has jurisdiction over the States of Paraná, Santa Catarina and Rio Grande do Sul.
[vi] Civil Appeal Docket No. 5001396-17.2011.404.7105/RS – Instituição Sinodal de Assistência Educação e Cultura VS. Associação Amapaense de Ensino e Cultura AND Instituto Nacional da Propriedade Industrial – INPI (Brazilian PTO) - Reporting Judge Hon. Federal Judge Sebastião Ogê Muniz – 3rd Panel of Judges of the Brazilian Federal Court of Appeals of the 4th Region.
[vii] The Brazilian Federal Court of Appeals of the 2nd Region has jurisdiction over the States of Rio de Janeiro and Espírito do Santo.
[viii] Because it has jurisdiction over the City of Rio de Janeiro where the Brazilian PTO is located.
[ix] Civil Appeal Docket No. 2002.51.01.530380-4 – Ind. Com. de Alimentos Desidratados Alcon Ltda. VS. Syndel Laboratoires Ltd AND Instituto Nacional da Propriedade Industrial – INPI (Brazilian PTO) - Reporting Judge Hon. Federal Judge Abel Gomes – 1st Panel of Judges of the Brazilian Federal Court of Appeals of the 2nd Region; citing Civil Appeal Docket No. 2004.51.01.513244-7 – Pizzaria Pires Ltda VS. Sabor de Fruta Sucos Ltda. AND Instituto Nacional da Propriedade Industrial – INPI (Brazilian PTO) - Reporting Judge Hon. Federal Judge André Fontes – 2nd Panel of Judges of the Brazilian Federal Court of Appeals of the 2nd Region.
[x] Civil Appeal Docket No. 2002.51.01.500564-7 – Fundação Universo et All. VS. Cezar Augusto de Mattos AND Instituto Nacional da Propriedade Industrial – INPI (Brazilian PTO) - Reporting Judge Hon. Federal Judge Márcia
Helena Nunes – 1st Panel of Judges of the Brazilian Federal Court of Appeals of the 2nd Region.
[xi] Application No. 821326791, in National Class 03.20 (for “tooth paste”), final rejection published in the Official Bulletin No. 1,993 of March 17, 2009; and Application No. 823509494, in International Class 03 (for “tooth paste and mouth wash products”), final rejection published in the Official Bulletin No. 2,150 of March 20, 2012 – Applicant: Colgate-Palmolive Company (US).
[xii] Item XXI of Article 124 of the Trademark Law.
[xiii] Application No. 829834273, in International Class 09 (for “speakers for connection with mobiles, phones and computers”), final rejection published in the Official Bulletin No. 2,193 of January 15, 2013 – Applicant: Sony Ericsson Mobile Communications AB (SE).
[xiv] Registration No. 819955019, in International Class 08 (for “electric shaver, parts and accessories included in this class, including shaving units, consisting of a housing with shaving heads”), granting decision published in the Official Bulletin No. 1,602 of September 18, 2001 – Registrant: Koninklijke Philips Electronics N.V. (NL).
[xv] Interlocutory Appeal Docket No. 2005.02.01.011707-0 – Koninklijke Philips Electronics N.V. AND Instituto Nacional da Propriedade Industrial – INPI (Brazilian PTO) VS. Spectrum Brands, Inc. et All - Reporting Judge Hon. Federal Judge André Fontes – 2nd Panel of Judges of the Brazilian Federal Court of Appeals of the 2nd Region.
[xvi] Only in relation to the Plaintiff, remaining effective and enforceable against third parties.
[xvii] Equivalent to the US “petit patents”.
[xviii] Also known as “Letters of Consent”.
[xix] Currently Registration No. 817131604 in the name of The Mentholatum Company.
[xx] Currently extinct due to lack of renewal.
[xxi] Lawsuit Docket No. 0008318-42.1996.4.02.5101 of May 31, 1996 - Smithkline Beecham Corporation VS. Instituto Nacional da Propriedade Industrial – INPI (Brazilian PTO) AND Allergan, Inc.
[xxii] In other words, if the provisions of Article 124, item XIX[xxii], of the Trademark Law, which prohibit registration of any mark which is a reproduction or imitation of a prior registered mark, intended to distinguish at least related products or services and which is likely to cause consumer confusion or undue association, if allowed to coexist with the registered mark, are not applicable.
[xxiii] As well as it may do at any time when an application is being examined.
[xxiv] Through Item VII of Article 124 of the Trademark Law.
[xxv] Article 233 of the Trademark Law.
[xxvi] Brazil is a member country to the Berne and Rome Conventions. Brazilian Copyright Act is Law No. 9,609/1998. Brazilian system is more similar to the French author’s right system rather than to the common law countries copyright system.
[xxvii] The Brazilian National Library and The Brazilian National School of Fine Arts of the Federal University of Rio de Janeiro – UFRJ are registries which can potentially receive applications to register propaganda slogans and signs.
[xxviii] With the already mentioned exception provided for in Article 129, 1st Paragraph of the Trademark Law.
[xxix] Source: www.darts-ip.com.
[xxx] Request to Ammend the Decision in Civil Appeal Docket No. 5001212-74.2010.404.7209/SC – Surf Mania Confeccoes Ltda. EPP VS. Instituto Nacional da Propriedade Industrial – INPI (Brazilian PTO) AND Renato Koslowski - Reporting Judge Hon. Federal Judge Carlos Eduardo Thompson Flores Lenz – 3rd Panel of Judges of the Brazilian Federal Court of Appeals of the 4th Region.