The Brazilian Patent and Trademark Office (BPTO) recently published Ordinances/INPI/PR No. 26/2023 and No. 27/2023, bringing important changes to the procedures for registration and recordal of Industrial Property and franchise agreements.

The new rules, result of deliberations held in December 2022, aim to simplify and streamline the processes of registration of contracts, boosting innovation and protection of Industrial Property in the country.

In another post, we talked about the main changes discussed, such as “E-notarization” and “e-apostille” in cases of digital signatures without the ICP-Brasil Certification, the presentation of bylaws in social contracts or constitutive act of Brazilian companies and the licensing of non-patented technology (“Know-how”). 

Wish to know more about how these changes apply to your business? Contact us and talk to one of our expert lawyers.

Font:https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/inpi-altera-normativos-sobre-contratos-de-tecnologia

The French brand Christian Louboutin applied for protection for the famous red sole of its shoes in Brazil back in 2009, when there were no regulations for so-called “position marks” in the country. In 2021, with the Brazilian Patent and Trademark Office (BPTO) Administrative Rule n. 37, this type of registration was allowed, which is why his application was classified under this new category.

The Administrative Rule provides that a distinctive combination capable of identifying products or services from others that are identical, similar, or alike, may be registered as a position trademark, provided it is formed by the application of a sign in a singular and specific position (i) and provided the application of the sign in said position may be dissociated from its technical function (ii).

Thus, after receiving 215 applications for registration of a mark of position, the BPTO decided to reject the application filed by the company, on the grounds that the iconic red sole did not meet the requirement of distinctiveness of the sign applied, which is mandatory for trademark protection by the federal entity.

This decision goes against several others issued internationally, and also came as a surprise because the position trademark of the famous red sole was responsible for prohibiting the production of footwear with red soles by the trademark “BRUNA SILVÉRIO SHOES,” in an unanimous decision rendered by the 1st Reserved Chamber of Business Law of the São Paulo Court of Justice, recognizing that consumers associate this characteristic with the company that owns the Louboutin’s trademark, due to the violation of its trade dress.

 However, it is still possible for the owner of the mark Louboutin to appeal against the rejection of the application, with the expectation that the decision be reviewed by the General Coordination of Appeals and Administrative Nullity Procedure of the BPTO.

Wish to know how to protect position trademarks in Brazil? Schedule a consultation with one of our expert lawyers.

The first case of the new coronavirus in Brazil was confirmed in February 26, 2020, in Sao Paulo[1]. Our country since then has had to adapt to what is referred to as “a new normal”.

Given this new globe scenario, new consumer needs and habits took place. These needs and habits challenged many entrepreneurs to develop new business management strategies, mainly in publicity and sales through digital media.

Consequently, the registry of mark became even more important since the Internet and social networks are the main ways of advertising and selling products and services. According to Ebit/Nielsen findings, new consumers online went up by 13 million, in Brazil, in 2020 – the highest in the last 13 years[2].

This rise of online consumers is reflected in a significant increase in the volume of requests for registry of mark which the Brazilian Patent and Trademark Office (INPI) received in the same year (2020). The INPI is the sole competent federal agency responsible for registration of trademarks. According to data published by SEBRAE[15]:

“[…]” the volume of requests for registration before the INPI reflects a growth of 19% in micro and small businesses. In 2019, 254 thousand applications were filed before the INPI, of which 160 thousand were made by MEI (individual micro and small businesses). In 2020, 275 thousand applications for were filed, 126 thousand of which were from small businesses”. [3]

Due to the broad impact of the pandemic in 2020, it is no surprise that most searched word on google was “CORONOVIRUS” [4]. The terms “CORONOVIRUS” [4] and “COVID” were obviously seen as commercially exploitable as trademarks for products and services.

We carried out a study based on INPI data of the terms “COVID”/ “CORONAVIRUS” (Portuguese word for Coronovirus). The aim of our study was to analyze the impact of the pandemic and its legal implications within the sphere of trademark legality.

Through this study, we verified that between March 2020 and May 2021, there were 82 applications for trademarks using the terms “CORONAVIRUS” and “COVID”. Our objective was to protect products and services in diverse market segments. This brought up interesting questions, especially related to the possibility of a specific owner of trademark to have exclusive use of the above-mentioned terms in order to identify product or service, as long as such product or service were not in the health segment.

The INPI granted registration to trademarks with names of diseases, in the past, such as: CATAPORA (varicella, chicken pox) to identify publicity[5] and entertainment[6] and even permitted its use in identifying clothing [7]. Nevertheless, all of the above, refer to very old decisions.

Recent decisions over the last 24 months, show that the first application for the use of CORONAVIRUS[8], as a trademark in Brazil, was made in March 3, 2020 to identify the commercialization of, among others, “Chemical and Pharmaceutical Preparations”. The decision to reject this application was published in October 6, 2020, based on: (i) INPI Law, Article 124, item VI which states that the description of a trademark without sufficient distinctive elements; as well as (ii) pre-existing registration number 901655678 referring to the mark “CORONA” granted in April 12, 2012 to identify “chemical substances, textile materials and artificial resins”.

Since this rejection, the INPI has made other decisions granting registration for trademarks with the term COVID as part of name, as well as other terms to identify treatments, health care associations to combat COVID, apps, and even anti-slip carpets.

In April of 2021, the INPI granted registration for a trademark with the term COVID to identify alcoholic beverages, with the understanding that trademarks using this term in their name, per se, do not infringe on LPI Law, Article 124, item III.

“Article 124 – The following are not registrable as marks: (…)

III – expressions, figures, drawings or any other sign contrary to morals and good customs or which offend a person’s honour or image or are an affront to the liberty of conscience, beliefs, religious cults or to ideas and sentiments worthy of respect and veneration;

The INPI reiterated further, the need for the examinator to verify the distinctiveness[10], veracity[11] and legitimacy, as well as, the connotation which a term takes on when used with the intent of identifying products and services. Moreover, it highlighted that a term must never offend the sentiments of respect dignity or sacredness.

“Marks with the term “COVID” are not in and of themselves an infringement of item III of article 124, of LPI. In the analysis applying to this item the connotation of the term “COVID” when used for certain products or services should be verified that it is not used against ideas or feelings considered worthy of respect or sacredness. Furthermore, the registrability of a mark ought to be analyzed with respect to its legal requirements, such as: distinctiveness, veracity, and the legitimacy of the applicant. The possible application, specifically items VI and X, should to be evaluated with special attention to descriptiveness as potentially misleading in relation to products and services[12].

The federal agency INPI, however, denied an application[13] for mark ANTICOV-19 to identify “Clothes making”, based on LPI Law, article 124, item X, understanding that it was falsely identifying its use/quality[14]

“Article 124 – The following are not registrable as marks: (…)

X – signs that suggest a false indication with respect to origin, source, nature, quality or utility of the product or service to which the mark is directed;

Thus, what is or is not directly related to the products or services in request for registration of trademark defines whether there is a denial of application, or not, using the terms COVID or CORONAVÍRUS, as well as an analysis of a possible infraction as defined in LPI Law, Article 124, items III, VI, X and XIX.

Therefore, it is highly recommended that before filing a trademark application, using such terms, a trademark availability search of these terms be carried out.

To learn more about the importance of a trademark availability search, please click here

[1] MINISTRY OF HEALTH (Federal Government – BRAZIL). National and international reaction to the new coronavirus. Available at: https://coronavirus.saude.gov.br/linha-do-tempo. Accessed in: March 05, 2021.

[2] G1 – Economy – Technology (BRAZIL). New consumers online went up by 13 million, in Brazil, in 2020; and revenue increases by 41%. Available at: https://g1.globo.com/economia/tecnologia/noticia/ 2021/03/29/faturamento-de-lojas-on-line-cresce-41percent-em-2020-maior-alta-em-13-anos.ghtml Accessed in: March 05, 2021

[3] SEBRAE – Sebrae News Agency (BRAZIL). Number of trademark registry requests by small businesses grows 19% during the pandemic. Available at: http://www.agenciasebrae.com.br/sites/asn/uf/NA/ numero-de-pedidos-de-marcas-por-pequenos-negocios-cresce-19-durante-a-pandemia,e936ff75f44 19710VgnVCM100000d701210aRCRD Accessed in: March 05, 2021

[4] G1 – Economy – Technology (BRAZIL). Google publishes the most searched terms in Brazil and in the world in 2020. Available at: https://g1.globo.com/economia/tecnologia/noticia/2020/12/09/lista-google-divulga-os-termos-mais-buscados-no-brasil-em-2020.ghtml Accessed in: March 04, 2021

[5] Registration of CATAPORA as mark (number 810812010), granted in November 22, 1983. Registration expired in March 31, 1994. Access through the INPI Database Consultation Portal. Available at: https://busca.inpi.gov.br/pePI/ Accessed in: March 05, 2021

[6] Registration of CATAPORA as mark (number 810812029), granted in November 22, 1983. Registration expired in March 31, 1994 Available at: https://busca.inpi.gov.br/pePI/ Accessed in: March 05, 2021

[7] Registration of CATAPORA as mark (number 909494738); requested in June 06, 2015 and granted in November 22, 1983. Registration expired in March 31, 1994 Available at: https://busca.inpi.gov.br/pePI/ Accessed in: March 05, 2021

[8] Registration request of CORONAVIRUS as mark (number 919314376), requested by HILA INDUSTRIA E COMÉRCIO DE FRAGRANCIAS LTDA – ME. This request was made to identify, by whatever form, the following trades: disinfectants; pharmaceutical preparations; hygienic preparations for medical use; products for combatting vectors, fungicides, and herbicides; soaps; chemical substances intended for industry. All under classification 35.

[9] Registration of COVID mark (number 919425216), granted in April 04, 2021, requested by LIA E BARBOSA SOCIEDADE DE ADVOGADOS. This request was made to identify the following: “Syrup drink; Non-alcoholic energy drink; Non-alcoholic fermented beverage; Energetic drinks; Isotonic drinks; Non-alcoholic beverages; Beer; Non-alcoholic preparations for making beverages; Syrups for drinks”. All under classification 32

[10] According to the item 5.9 of the Brazilian Trademark Manual Distinctiveness is one of the fundamental requirements for the validity of a trademark. When the law refers to distinctive marks (Article 122 of the LPI), a decision is reached that this requirement is directly related to the functionality of the mark. Thus, it distinguishes the indicated object, by differing the mark from others of the same genus, nature, or species. The Brazilian Trademark Manual is available at: http://manualdemarcas.inpi.gov.br/ projects /manual/wiki/05_Exame_substantivo#59-An%C3%A1lise-do-requisito-de-distintividade-do-sinal-marc%C3%A1rio Accessed in: March 05, 2021

[11] According to the Brazilian Trademark Manual, item 5.10, the principle of non-deceptiveness of the mark is stated in the article 124 of LPI. It forbids mark registration in cases of misleading terms as to the origin, source, nature, purpose or usefulness of the product or service for which the mark is intended. The Brazilian Trademark Manual is available at: http://manualdemarcas.inpi.gov.br/ projects /manual/wiki/05_Exame_substantivo#59-An%C3%A1lise-do-requisito-de-distintividade-do-sinal-marc%C3%A1rio Accessed in: March 05, 2021

[12] legal opinion on granting decision of the Registration number 919425216, which was made public by the INPI in March 16, 2021.

[13] Registration request number 920065627, referred to AntiCovid-19, filled in July 03, 2020. The petition was rejected in February 17, 2021.

[14] legal opinion on granting decision of the Registration number 920065627, which was made public by the INPI in February 17, 2021.

[15] Comment for translation. SEBRAE is the acronym for: Serviço Brasileiro de Apoio às Micro e Pequenas Empresas, which means Brazilian Support Service for Micro and Small Businesses