Publication of the PTO is an important source for assess risks and indicate appropriate mitigating recommendations in business operations involving trademarks
In this article, we present a selection of some understandings contained in the decisions presented in the Collection of Decisions of the 2nd Administrative Instance,[1] a publication focused on brand issues, launched by the National Institute of Industrial Property (INPI) in December 2021.
The collection compiles the technical opinions of the last 20 years used as a basis for decisions of appeals and administrative nullity proceedings (PAN), brought in trademark registrations. In it we find the interpretation of the 2nd administrative instance on the legislation in force at the time and the final understanding in paradigmatic cases.
As a caveat in the edition, the understandings of the compiled decisions are subject to the change, with future effectiveness, by the General Coordination of Appeals and Administrative Processes of Nullity or by the administrative body itself.
Highlights of the collection
The text presents some decisions on the license of the trademark sign, which covers the lawfulness of the trademark sign as a whole. The understanding that "the graphic representation of official or public monument can be registered as a trademark, provided that sufficiently stylized"[2] is an example.
Applications for registration of trademarks whose designs are referred to official or public monuments, such as the Statue of Liberty, could not be registered, pursuant to Article 124( I) of the Intellectual Property Act ( LPI ) (Law 9.279/96). This provision provides that a sign required as a mark will not be registerable when it comes to reproduction of official, public, national or international monuments, as well as their respective designations or imitations.
However, in accordance with the criteria established by the INPI'sTrademark Manual (Trademark Manual) in the analysis of similar matter, can be registered the sufficiently stylized marks, whose traces used differentiate it from the original monument.
Also, in regard to Article 124, I of the LPI, another understanding established was that "the recognition of a listed heritage building does not prevent the registration of its denomination as a trademark by a third party",[3] which is in accordance with the jurisprudential understanding of the Superior Court of Justice (STJ) that this recognition is an act of civil life for the protection of cultural heritage. It does not, therefore, have any effect on the commercial sphere, including in relation to the registration of trademarks.
The collection brings decisions about the distinctiveness of the trademark sign. There are understandings such as that "it is unregistrable the marcary set that has as main element term considered unregistrable, even if required in mixed form of presentation, which does not confer sufficient distinctiveness to the set".[4] In such cases, it is necessary to verify that the brand has sufficient differences that do not relate it to an existing product/service.
Even if they are mixed, trademarks that do not have relevant fantasy elements in the marcary set to make them distinct or graphic representations sufficient to characterize the distinctiveness of the unregistrable nominative element are in disagreement with Article 124, item VI, of the LPI. Therefore, they cannot be registered.
In relation to the veracity of the trademark sign, it was decided that "it is unregistrable as a mark the derivative term of geographical indication that induces the perception of commercial establishment, by configuring false indication as to the quality of the product/service indicated".[5]
For example, marks that reference a particular location, such as the Champagne region in France, cannot be registered. The word "Champagne", in this case, is registered in the PTO as a geographical indication, designates the origin of wines and sparkling wines from that region in France. Its registration, therefore, is prohibited according to::
- Article 124, items IX and X of the LPI, which seal, the registration of a geographical indication trademark or the use of a sign that improperly induces geographical indication; and
- understanding signed in NOTE/INPI/PRESIDENCY/CGREC/COREM/No. 01/2018, that terms derived from geographical indication, as in the present case, cannot be registered either.
In addition, Article 182 of the LPI determines that "the use of the geographical indication is restricted to producers and service providers established in that location, and it is also required, in relation to designations of origin, the fulfillment of quality requirements".
The granting of the registration of the mark, in this case, could also infringe the consumer's right by misleading him by linking the marketed product to those effectively protected by the geographical indication, with specific fame and quality.
On the availability of the trademark sign, the collection brought the understanding that "the descriptive expression of the marked product/service associated with the geographical name indicative of the place of origin or provision of the product/service can be registered as a mark".[6]
This is because, according to the consolidated understanding of the PTO, these marks have less protection under Article 124, item XIX, of the LPI, because they have a low degree of distinctiveness, being considered "evocative/suggestive trademarks". They should live with other similar trademarks, if there is a minimum degree of difference between them.
As the trademarks in question are composed of common elements in a given segment, which are considered unregistrable individually, they require distinctive elements between them, such as the association with the name of the city of provision of that service, provided that it is actually provided in the indicated locality.
Another understanding also related to the availability of the trademark sign is that "a term whose meaning does not maintain an immediate/direct relationship with the products or services indicated is registrable as a trademark, observing the non-exclusivity to the use of the term in its real meaning”.[7]
For example, a restaurant may use as a trademark the name of a specific food, with the caveat that this record does not exclude from the common property the rights to use that particular word as an identifier of the food by competitors.
In such cases, the trademark must have a mediate relationship with the services provided, not focusing on the rule provided for in Article 124, item VI of the LPI, which seeks to maintain the public domain on terms commonly used to identify products and services, to avoid monopoly and to ensure free competition.
Also, in relation to the availability of the trademark sign, it was decided by the "possibility of registering a similar or identical trademark in an equal or related market segment on behalf of companies belonging to the same economic group."[8]
In the case, trademarks cannot imitate a figurative element of a previous trademark, owned by a third party, which is not the case where it has been demonstrated that the trademark sign indicated as an impediment belonged to the company of the same economic group as the applicant for registration.
If there is no evidence of unfair competition in the specific case, it is understood that there is the possibility of registering a similar or identical trademark, in the same market segment, on behalf of companies of the same economic group, subsidiaries or controlling companies. The express authorization by the company holding the previous registration, in this case, is dispensable, provided that the provision of Article 124 of the LPI is respected, which prevents there being two or more marks for the same product or service.
About the expiry of trademark registration, the collection brought some understandings, such as that there are "legitimacy of the bankrupt estate to request expiry provided that it regularly represented by the liquidator".[9]
In order to grant the application for expiry of the trademark registration,, it is necessary to prove the applicant's legitimate interest, as provided for in the Trademark Manual.
The discussion – treated in THE NOTE/INPI/PRESIDENCY/CGREC/No. 20/2011 – involved the legitimacy of the application of the bankrupt estate, which was already in the condition of bankrupt estate at the time of the application and was the holder of a registration application that was paused due to the expiry of the registration.
It is understood that the bankrupt mass has a legitimate interest in requesting expiry of the trademark registration, if it is duly represented by the liquidator (currently judicial administrator). This is because the bankrupt estate is constituted at the time of the bankruptcy of the company, encompassing all its assets, which are now represented by the judicial administrator.
The collection also brought the understanding that the "copyright is a legitimate interest for an application for expiry of a conflicting trademark registration."[10]
Even if the application for the expiry of a particular trademark is made by an applicant who has not requested registration or registration of that mark in the PTO, the legitimate interest for the application is configured, where it is established that the applicant is the copyright owner – if, for example, applicable to a work or character, in which the right of protection in the face of the conflicting mark is appropriate, in accordance with Article 18 of the Law 9610/98.
There are also compiled decisions on procedural matters, including the one establishing that "the guarantee of priority care for the elderly does not apply to the legal entity, even if it has elderly people in its corporate structure."[11]
It was established that the priority care provided for in the Statute of the Elderly can only be granted when the application for registration or registration of trademark is under the ownership of an individual over 60 years, also reiterating the understanding of the Specialized Attorney of the PTO, through the OPINION / INPI / PROC / DIRAD No. 14/08. The justification is the fact that legal entities have personality and assets different from those of the partner, not applying to them rights and guarantees inherent to human persons.
The collection is extremely relevant for knowledge, analysis, and debate about the understandings of the 2nd Administrative Instance of the PTO involving trademark registrations and applications, by all interested parties, such as holders, third parties, lawyers, industrial property agents and examiners.
The decisions compiled are also important for assessing risks and indicating appropriate mitigating recommendations in trade operations involving trademarks. These recommendations should be compatible with the current and consolidated positioning of the PTO in order to avoid losses or delays for the parties and their operations.
[2] Process 827661746; Decision to appeal against the rejection published in the Industrial Property Journal (RPI) no. 2263 of 20/05/2014.
[3] Processes 828293015 and 828293007; PAN Decision published in RPI No. 2334 of 29/09/2015.
[4] Process 824936841; Decision to appeal against the rejection published in RPI 2215 of 18/06/2013.
[5] Process 900326760; Merit requirement published in RPI 2457, 02/06/2018.
[6] Process 823723240; PAN Decision published in RPI 2128, 10/18/2011.
[7] Process 819091243; Decision to appeal against the rejection of a trademark registration application published in RPI 1876 of 19/12/2006.
[9] Process 006924611; Merit requirement published in RPI 2120, of 08/23/2011.
[10] Process 817641866; Decision to appeal against the rejection of an application for expiry published in RPI 2123, 13/09/2011.
[11] Process 823870790; Decision to apply for priority examination communicated to the applicant pursuant to Article 226(II) of the LPI.
