6
Editor note’s
By Laetitia d’Hanens and Maitê Cecilia Fabbri Moro
7
Rediscovering the boundaries of trademark law:
The challenges of non traditional marks
By Pedro Vilhena
This paper aims at presenting critical considerations about the legal treatment reserved for non-traditional forms of presentation of trademarks by selected jurisdictions. Through the compartmentalized analysis of these legal systems, the author proposes a series of conclusions that may constitute elements of analysis of the possibility of registration of these signs as trademarks and their corresponding legal protection. The proposed methodological outline contemplates the interpretation of positive Trademark Law considering academic studies and general principles of Law, without, nevertheless, neglecting or exacerbating the peculiarities of the ontological nature of non-traditional trademarks.
Keywords: Trademark Law. Non-traditional marks. Visually perceptible signs.
23
Non-traditional marks and alternatives
before the brazilian PTO
By Flávia Tremura Polli Rodrigues
The protection of non-traditional marks in Brazil develops slowly. Unfortunately, the Brazilian law has not followed the demand of the industry and of the technology over the last 20 years, as opposed to what happened in countries that identified the importance of such signs to their holders and to the economy. Therefore, important categories of non-traditional marks cannot be protected in Brazil through trademark registration. The article discusses how holders of non-traditional marks try to protect these assets in the country and the Brazilian PTO position on the subject.
Keywords: Marks. Non-traditional. Digital transformation. Cryptocurrencies. Metaverse.
34
Position marks and their regulation by the
Brazilian Patent and Trademark Office – BPTO
By Ana Lúcia de Sousa Borda
This article analyzes the rules applicable to position marks, now susceptible of registration in Brazil and which were subject of a Public Consultation, highlighting the joint proposal of amendments submitted on behalf of Brazilian Association of Intellectual Property (ABPI), Brazilian Association of Intellectual Property Agents (ABAPI), Association of Intellectual Property of São Paulo (ASPI) and ASIPI (Interamerican Association of Intellectual Property). Even considering that some suggestions made by these associations were accepted by the BPTO, the regulation has been received by the interested community with a mixture of frustration and concern, as it is possible to foresee important limitations to the effective implementation of position marks in Brazil. The associations have then concluded that protection to position marks will be granted only in exceptional cases, therefore, frustrating the expectation related to the introduction of a further intellectual property asset available for protection in different fields of industry.
Keywords: Position Mark. Regulation. Implementation.
44
Non-traditional trademarks in sport
By Maria Inez Araujo de Abreu
Traditional trademarks often do not cover the totality of human creativity, especially in sports, which involve passion and dedication. Although the definition of a non-traditional trademark is not directly related to its registrability, the possibility of registration of non-traditional trademarks becomes the focal point for the development of sports, as the possibility of protection of trademarks by means of the registration is a tool that raises new investments which benefit a chain of people directly or indirectly involved in the segment.
Keywords: Sport. Trademarks. Non-traditional trademarks. Registrability.
55
The legal framework for the protection of sound marks in Brazil: a comparative view
By Fábio Pereira, Denise Louzano e Fernanda Azarite
This article aims at addressing the aspects related to the protection regimen for sound trademarks in Brazil. In that sense, an analysis of the specific legislation relating to the protection of industrial property and possible applicable copyrights was conducted and also an analysis of various international experiences on the subject, as well as with a study of emblematic cases.
Keywords: Sound trademarks. Registrability. Industrial Property Law. Distinctiveness. International Legislation.
67
Protection of motion marks in the US
By Robert B. G. Horowitz
Motion marks are protectable in the U.S. due to the definition of “trademark” in the trademark statute. The spectrum of distinctiveness applies; such marks must be source identifiers and not functional. U.S. Patent and Trademark Office (USPTO) regulations for, and examples of, registered motion marks are provided.
Keywords: Motion Marks. Drawing. Description. Specimen.
72
Three dimensional trademarks – essencial improvement
By Maitê Cecilia Fabbri Moro
Even after more than 25 years of recognition of the protection of three-dimensional marks by the Brazilian legal system, there are still difficulties to be faced in relation to the protected object and the analysis of these marks before the Brazilian PTO. Considering the object, the recent decisions of the Brazilian PTO, it is perceived that there are still cases that leave doubts about what constitutes a common, necessary or functional form. The distinctiveness analysis of the form also needs tweaks and refinements. Threedimensional brands, like all other non-traditional brands, require a more accurate analysis that evaluates and values the exercise of the distinctive trademark function, after all, it is from the trademark function that it is verified whether the distinctive sign is perceived as a brand.
Keywords: Trademark. Shape Mark (3D mark). Distinctiveness
85
Expert examination in trade dress cases: criteria for conflict analysis
by João Vieira da Cunha, Vanessa Ribeiro e Camila Avi Tormin
The Brazilian Superior Court of Justice has recently acknowledged that the expert examination is an important tool in solving a trade dress conflict. In this realm, the article presents the criteria identified in the case law to guide the necessary technical analysis.
Keywords: Trade Dress. Unfair Competition. Expert Examination. Method of Analysis.
