The Protection of Slogans as Trademarks in Brazil: A New Perspective

Slogans play a crucial role in branding, serving as memorable and important expressions of a company’s identity. In Brazil, slogans are eligible for trademark registration, but their acceptance has historically been limited by strict requirements for distinctiveness and functionality. With the Brazilian Patent and Trademark Office (BPTO) recently updating its interpretation of the law, the landscape for protecting slogans is evolving, offering new opportunities for brand owners.

Understanding the New Draft Guidelines

In October 2024, the BPTO released a draft update to its trademark examination manual addressing the treatment of slogans, specifically the interpretation of Article 124, VII, of Brazil’s Industrial Property Law. This provision excludes from registration marks that serve exclusively as advertising expressions. However, the draft guidelines clarify that a slogan can qualify for trademark protection if it fulfills both the distinctive and advertising (or promotional) functions, provided it is not solely promotional or descriptive.

These draft guidelines were incorporated into the BPTO’s full examination manual on November 27, 2024, when the new rules officially came into effect. While significant changes to the draft are not anticipated, the BPTO has noted that it will keep stakeholders updated should any adjustments be made before implementation.

The BPTO’s revised approach introduces a two-pronged test for determining registrability:

1. Advertising Function: The slogan may highlight product qualities, recommend services, or convey a company’s mission or values. However, this alone does not disqualify the slogan from protection.
2. Distinctive Function: To be registrable, the slogan must also act as a source identifier, distinguishing the goods or services of the applicant from those of competitors.

This nuanced interpretation acknowledges that a slogan can serve multiple roles simultaneously — both as a brand identifier and as a promotional tool — provided it demonstrates originality and distinctiveness.

Examples from the Draft Guidelines

The draft manual provides examples of slogans that meet or fail to meet the distinctiveness threshold. Below are translations of examples included in the BPTO’s guidelines for illustrative purposes:

Approved:

“Bretas, always the best service” (translated from “Bretas, sempre o melhor atendimento”): While promoting the brand, the phrase is broad enough to serve as a distinctive mark for education services.

“Starting from zero” (translated from “Saindo do zero”): The slogan, used for investment consultancy services, is distinctive due to its structure and dual meaning.

Rejected:

“Unmissable sale!” (translated from “Liquidação imperdível!”): A purely descriptive and promotional phrase that lacks originality.

“The best shoes in Brazil” (translated from “O melhor sapato do Brasil”): A laudatory phrase with no distinctiveness.

The Challenges of Assessing Originality

These examples illustrate the BPTO’s focus on originality and the ability of the slogan to transcend generic or promotional messaging. However, this emphasis on originality introduces a significant challenge: the absence of clear, objective standards for assessing whether a slogan is “original” or “creative enough.” This leaves much of the evaluation to the individual examiner, resulting in a case-by-case assessment that is inherently subjective.

This subjectivity poses risks for applicants, as different examiners may apply varying thresholds for what qualifies as original or distinctive. A slogan deemed sufficiently creative by one examiner might be rejected by another, creating uncertainty in the application process. Without clearer criteria, brand owners face potential inconsistencies, which could complicate their efforts to secure trademark protection for slogans.

Implications for Brand Owners

The draft guidelines open doors for greater recognition of slogans as valuable trademarks in Brazil. However, brand owners must navigate these rules carefully. To increase the likelihood of registration:

• Craft Original Slogans: Ensure that the phrase is unique and capable of functioning as a brand identifier, not just an advertisement.
• Demonstrate Distinctiveness: Collect evidence of consumer recognition and originality, particularly for slogans that might be considered descriptive.
• Combine Elements Strategically: A mix of distinctive and promotional elements can strengthen the case for registrability.

A Step Forward for Slogan Protection

The BPTO’s draft approach reflects a more balanced understanding of the dual roles slogans play in branding. By allowing for the registration of slogans that combine distinctive and promotional functions, the new guidelines provide greater flexibility for businesses to protect their intellectual property. However, the process remains rigorous, emphasizing the importance of originality and the ability to stand out in the marketplace.

As Brazilian courts have historically taken a more flexible approach to slogan protection, these administrative changes further align the BPTO with judicial interpretations, reducing the need for litigation. This evolution in Brazilian trademark law not only benefits brand owners but also strengthens the country’s reputation as an IP-friendly jurisdiction.

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