Brazilian PTO changes its understanding on the registration of “slogans” as trademarks

In a seminar open to the public held on October 30, 2024, the BPTO announced that it will change its interpretation of article 124, item VII, of Law 9.279/96 – the Brazilian Industrial Property Law (BIPL) – which prohibits the registration of advertising expressions, also known as slogans, as trademarks.

According to the current interpretation, the BPTO does not allow the registration of expressions that exclusively have an advertising purpose, i.e. dissociated from their trademark purpose of identifying the origin of a product or service. Therefore, slogans such as “Amo muito tudo isso”, “So delicious dairy free” and “Make the impossible possible” had their applications refused by the BPTO.

An expression that has merely an advertising purpose is one that:

–    Recommends or advertises qualities of the product/service identified;

–    Conveys the company’s mission, values, ideas or concepts;

–    Aims to persuade the interlocutor to take action; or

–    Highlights the product/service identified in comparison to the competition.

Under the new interpretation, the BPTO will now accept the registration of slogans that have a distinctive function, i.e. that are original and identify the origin of a product or service. Slogans or advertising expressions that are merely descriptive, comparative, promotional or lack originality will continue to be rejected for registration on the basis of article 124, item VII, of the BIPL.

The revised understanding stems from the authority’s recognition that the registration of slogans is a practice already adopted by a large number of countries with which Brazil has trademark treaties, as well as a way of valuing the originality of these slogans, in addition to the greater difficulty of protecting slogans by means other than trademark registration.

In short, this change will enable the registration of combinations of trademarks and slogans, or even isolated advertising expressions, as long as they are original and different from other trademarks or slogans already registered in the same category. This is why it is important to promote the registration of slogans currently in use as soon as possible, to prevent third parties from obtaining registration for similar expressions and trying to prevent the original owner from continuing to use its slogans.

The new understanding will come into force as of November 27, 2024, and will apply even to applications awaiting first analysis or a decision on appeal.

If you would like more information on the subject or an evaluation of your portfolio to identify possible new registrations, please write to your usual contact at our office or click here.