In the early days, branding was the act of creating a name, symbol or design capable of identifying a product or service. This definition brought together the idea of visual representation as a key feature to identify and distinguish a certain company or its products or services in the market.
The concept of branding evolved. The visual representation is no longer a necessary feature of a brand, as any symbol or sign sensible to any of the five human senses can play the role of a successful brand. The main feature of a brand then is its capability of connecting to people, no matter how the brand is perceived by the consumers’ senses.
This idea represents a total shift in the concept of branding and so should impact on the forms of defense afforded to those brands that do not fit the traditional registrable branding styles. But how can unusual brands be effectively protected and how far has legislation gone to date?
In Brazil, only signs that are visually perceptible can be protected as marks, excluding most innovative and creative brands that can only be enforced before courts based on the broad but still abstract set of unfair competition rules. Even the parameters for protection of a simple 3D mark, which registration was forbidden by the revoked law of 1971, is not clear in the law of 1996.
The current law forbids the protection of the necessary, common or ordinary forms of a product or packing, or that one which cannot be dissociated from a technical effect. The protection thus, would result from the distinctiveness of a product shape, design, packaging or wrapping and the lack of functionality, that can entail a high degree of subjectiveness from the examiners, who, for instance, protected the Perrier iconic green bottle, but led other marks widely protected in other jurisdictions to an unfortunate fate.
The 3D marks that are denied protection by the Brazilian PTO may be challenged before courts. Other unusual brands, that are not protected by registration also find a way. That was what happened to trade dresses and slogans, not registrable in Brazil but widely protected before courts. Position marks, thought, are about to have a different fate.
In 2021, the Brazilian Trademark Office opened a public consultation to discuss the regulation of position marks in Brazil, but the final draft was not enacted. The lack of regulation though did not prevent companies from obtaining protection in court proceedings, as New Balance did over its famous ‘N’, as a figurative mark. If fortunate enough, Louboutin’s red sole in a sandal, pending since 2009, may finally be examined under the new regulation.
Aside from the urgent changes in the law, the protection of other valuable and highly distinctive signs may find a way via other elements of protection, such as industrial designs or copyright. Brazilian courts have also played a relevant role in the protection of trade dresses and other unusual signs. All in all, who would dare copying Netflix’s ‘ta-dum’ sound?
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