Updates in Brazilian PTO’s Trademark Manual allow slogan registration

“Everyone wears it – Havaianas”, “The real mayonnaise – Hellmann’s”, “Just Do It – Nike”, “What else? – Nespresso” and “Red Bull Gives You Wings – Red Bull”. These and many other easily recognizable slogans can now be registered as trademarks in Brazil, thanks to the new update to the Trademark Manual [1]published by the Brazilian Patent and Trademark Office (“BPTO”) on November 27, 2024. This change represents a historic milestone for intellectual property in the country, allowing advertising expressions that also have a distinctive function to be registered as trademark.

Brazil was one of the few countries that did not allow slogans to be registered as trademark. The BPTO’s position was based on the strict interpretation of article 124, VII, of the Brazilian Industrial Property Law (Law No. 9,279/96), which prohibited the registration of signs used exclusively as advertising[2]. While this article remains valid, the BPTO has revised its position, adopting a more flexible interpretation to permit the registration of slogans as trademarks provided that such sign has the ability to identify and distinguish products or services.

According to the Trademark Manual, elements that can serve both as trademarks and as advertising tools are not covered by the legal restriction. This category includes signs made up of: (i) Combination of distinctive elements with elements that serve solely an advertising function (i.e., “Atalanta – Super Promoção!” [“Atalanta – Super Promotion!”]); and (ii) Combination of elements capable of simultaneously performing both a distinctive function and an advertising function (i.e., “I can’t believe it’s yogurt”, “You can dance”).

Conversely, expressions that, as a whole, (i) serve an advertising function; and cumulatively (ii) are incapable of performing a distinctive function, such as “Take advantage of our offers” or “The best shoes in Brazil,” will continue to be rejected because they lack originality and elements capable of distinguishing products or services.

Previously, slogans in Brazil were protected only under copyright law, which limited companies’ ability to defend their brands against misuse or unfair competition. Now, with the possibility of registration, companies can strengthen their branding strategies, ensuring exclusivity over these essential elements of their communication.

It is worth noting that the scenario began to change as Brazil sought to align itself with international protection trends. Additionally, market pressures, combined with increasing litigation on the matter, resulted in a revision of Brazilian PTO’s interpretation[3]. Consequently, the new approach adapts to the law’s interpretation and recognizes that slogans fulfilling a dual function—advertising and distinctive—can be registered as trademarks.

The update to the Trademark Manual represents a significant evolution in the Brazilian intellectual property landscape. It not only broadens the possibilities for trademark protection but also brings Brazil in line with global regulations, fostering innovation and promoting market competitiveness. For companies that were previously unable to register their slogans as trademarks, this is an opportune moment to file new applications before the Brazilian PTO, leveraging the updated and more flexible procedure.

[1] Brazilian PTO. “Updates to the Trademark Manual.” INPI, 2024, https://manualdemarcas.inpi.gov.br/projects/manual/wiki/Atualizações.

[2] Article 124 – The following are not registrable as marks: (…) VII – signs or expressions used only as a means of advertising;

[3] On August 14, 2024, the STJ, in REsp n°. 2105557-RJ (click here), ruled in favor of registering the trademark “Theraskin Harmony on the Skin,” affirming that the expression, in addition to being advertising, has distinctiveness. The court also criticized Brazilian PTO´s restrictive interpretation of article 124, VII, of the Industrial Property Law (LPI).