On the third day of ABPI’s 40th International Congress on Intellectual Property, the panel “Controversial issues in the examination and trademark decisions” revealed that decisions regarding the registration of a trademark are often subject to different interpretations. The debate brought together federal judge Márcia Maria Nunes de Barros, from the 13th Federal Court of Rio de Janeiro, Enrique Diaz, from ASIPI – Asociación Interamericana de la Propiedad Intellectual, and Pedro Alvisi, from the BPTO, mediated by Ricardo Vieira de Mello, an honorary life member of ABPI.
In her presentation, Judge Márcia Nunes de Barros dealt with the changes in the distinctiveness of a trademark. One is the phenomenon of “genericizing”, which occurs when a trademark, previously known and famous, due to excess of distinctiveness, loses market resonance. “It is as if the trademark abandoned the product it designates and started to get confused with the product”, explained the judge.
Another mutation is that of secondary meaning and, in this case, the opposite occurs: the sign that previously had no relevance starts to gain distinctiveness and increases its protection spectrum. “The most important aspect of the trademark is semiological”, stated the judge. According to the magistrate, in the secondary meaning allegation, the burden of proof rests with the trademark owner, whose receptiveness of that new meaning must be verified with the consumers. “Many people claim secondary meaning, but they do not provide any kind of proof”, she said. “The BPTO manuals with their guidelines are safe parameters for this understanding and I am happy that they are considering the judicial decisions”.
In his speech, Pedro Alvisi emphasized the importance that the Trademark Board of the institute gives to the monitoring of lawsuits on the matter. “This is an extremely important source for technical improvement and an opportunity for the board to present their understanding of certain issues to the judges”, he said.
The BPTO representative discussed the rights of precedence in trademarks and emphasized that, in this regard, there are no doubts as to their requirements, but as to their application. And he cited the first paragraph of Article 129 of the Industrial Property Law (Law 9.279/96): “Anyone who, in good faith, on the date of priority or deposit used in the country, (…) identical or similar trademark (…) will have the right of precedence in the registration”. According to Alvisi, in this case, the question would remain whether this right could also be claimed after the granting of registration to others, for the purpose of deconstructing the right already obtained, as a ground for nullity of registration.
Diaz, vice president of ASIPI, gave examples of controversial trademark examination decisions made by the Mexican patent and trademark office. In one case, a well-known car manufacturer had its registration of a car model canceled because there was a bar with the same name, although the defendant appealed on the grounds that the administrative procedure had not been followed. In the other example, a trademark application was initially denied because Mexican law considered that the expression would offend morals and good manners. The holder appealed and the court reversed the decision. “Many trademarks are rejected because they supposedly attack morals and good manners, and decisions are often reversed because they do not necessarily have a negative meaning”, said Diaz.
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