The INPI will begin accepting trademark applications with advertising elements

On October 30, 2024, during a meeting at the headquarters of the National Institute of Industrial Property (BPTO), led by the Director of Trademarks, Industrial Designs, and Geographical Indications, it was announced that, going forward, the BPTO will begin accepting trademark applications that include advertising elements, such as slogans.

This change has been officially implemented with an update to the Trademark Manual on November 27, 2024.

Until now, Brazil and South Korea were the only countries to adopt a restrictive interpretation regarding the registration of slogans as trademarks.

The new approach by the BPTO alters the interpretation of Article 124, Section VII of the Industrial Property Law, which previously prohibited the registration of signs or expressions used exclusively as advertising. Under the revised interpretation, refusal based on this provision will occur only when, simultaneously, the sign serves an advertising function and lacks the capacity to function as a distinctive mark.

This change aligns with a recent decision by the Superior Court of Justice (STJ) in Special Appeal No. 2105557 – RJ. In that case, the STJ recognized that a cosmetics company could register its brand, despite its advertising character, because the expression used was not sufficient to classify the mark as merely an advertising sign. The mark, which included both nominative and figurative elements, was found to have distinctiveness and could not be rejected under Section VII of Article 124 of the Industrial Property Law.

The trademark application was allowed, but with the caveat that exclusivity would not extend to the advertising expression itself.

This development marks an important step forward for Brazil, aligning the country with international practices and opening new opportunities for companies to protect their advertising elements.