Brazilian Patent and Trademark Office Allows Trademark Registration for Slogans

The Brazilian Patent and Trademark Office (“BPTO”) announced, through its Trademark Director, Schmuell Lopes Cantanhede, on October 30, 2024, a new approach regarding the registration of advertising signs and expressions (slogans and taglines) as trademarks. Effective November 27, 2024, the BPTO will accept trademark registrations for advertising signs and expressions, provided they fulfill a distinctive function.

It is worth noting that, since 1996, the BPTO stopped granting registrations of signs or expressions used solely for advertising purposes. This prohibition was established in item 5.9.4 of the Trademark Manual and based on item VII, of Article 124, of Law No. 9,279/96 [1] (the "Brazilian Industrial Property Law"). Consequently, advertising slogans were previously protected only through unfair competition claims under Article 195 of the same law.

Despite this shift in policy, the BPTO will continue to reject applications for signs or expressions that lack distinctive capacity, as clarified in the revised item 5.9.4 of the Trademark Manual. Rejections may occur under the following circumstances:

• The advertising expression has become commonplace within the advertising sector;
• The expression is purely descriptive, comparative, promotional, or merely extols the quality of products or services or the conditions under which they are offered; or
• The expression lacks originality.

The revised item 5.9.4 of the Trademark Manual also provides examples of registrable and non-registrable expressions. For instance, phrases like “ENJOY OUR OFFERS,” “TAKE 3 PAY 2,” and “THE BEST SHOES IN BRAZIL” are deemed non-registrable due to their generic nature. On the other hand, expressions such as “I CAN'T BELIEVE IT'S YOGURT,” for yogurt, and “SEEK YOUR DREAM,” for education services, are considered registrable due to their distinctiveness.

This new interpretation aligns Brazil with several countries with which it maintains trademark treaties, many of which already allow slogans to be registered as trademarks. Furthermore, the change presents a significant opportunity for companies to secure protection for slogans and advertising expressions, which are often of strategic importance.

Lastly, this shift underscores the importance of conducting prior searches at the BPTO before developing slogans, as companies must now account for potential trademark conflicts.

In conclusion, the BPTO’s new stance reflects an evolution in the interpretation of item VII of Article 124 of the Brazilian Industrial Property Law. The focus has shifted from solely assessing the advertising function of a sign to also evaluating its distinctive capacity.

[1] “Article 124. The following are not registrable as trademarks: VII - sign or expression used solely as a means of advertising.” The full text in Portuguese is available at: https://www.planalto.gov.br/ccivil_03/leis/l9279.htm