Protecting slogans in Brazil

Slogans and advertising expressions are everywhere – broadcast on radio and television, displayed on billboards and published in printed media such as magazines and newspapers. So powerful have they become that many slogans are now as important as the trademarks to which they refer, and have even become absorbed into everyday language.

Brazil’s former Industrial Property Code (5772/1971) was one of the few statutes in the world to protect slogans, as well as defining exactly what can be registered as an advertising expression or slogan. However, Article 124(VII) of Industrial Property Law 9279/1996 changed this situation dramatically. Under this recent law, slogans are no longer subject to an exclusive right or to registration when used solely as a means of advertising.

Today, slogan protection is theoretically supported by trademark law (when the slogan is used as a trademark), unfair competition rules and copyright. However, in practice, it has proved extremely difficult to protect slogans using these means.

Demand for slogans

The amount of money invested in marketing and advertising is testament to the importance that companies place on communicating with their customers. Slogans are used in conjunction with trademarks to enhance the characteristics and qualities of products or services and to induce customers to purchase them.

However, this is not enough; slogans should have something more, even if is difficult to pin down exactly what this might be. Any successful advertising strategy should include the following steps:

• Devise a creative slogan that can be easily memorised;
• Select the media channels on which to broadcast the campaign; and
• Plan the timing and frequency of broadcasting.

A good slogan can become as strong as the trademark that it serves as result of intense exposure through different media, which can result in the slogan developing a secondary meaning.

But if slogans are so relevant to companies, why do they change? One of the goals of a slogan is to demonstrate the company’s positioning strategy. As a company develops, changes are reflected in the slogans that it uses, making slogans the easiest way for a company to convey its current message to the public.

However, in order for use of this valuable tool to be guaranteed, efficient protection is required.

Slogans then and now

Law 5772/71 – then

The former Industrial Property Code not only defined the concept of ‘sign and slogan’, but also afforded legal protection to slogans through specific registration, provided that the slogans in question were original, available, true and legal. These provisions made slogans easier to identify and to protect.

Law 9279/96 – now

Not only does the current Industrial Property Law contain no definition of ‘slogan’, but Article 124(VII) explicitly states that slogans may not be registered as trademarks if they are used merely for advertising purposes. It is clear that this exclusion has caused legal uncertainty for slogan owners.

After the law was enacted, a number of interpretation issues arose as to the proper distinction between trademarks and slogans, particularly for determining when an expression is used “solely” as a means of advertising.

The situation became so confusing that the Brazilian Patent and Trademark Office (INPI) established that the Trademark Analysis Guidelines for its in-house trademark analysts, in order to enhance their understanding of Article 124(VII).

However, even with the help of these guidelines, confusion remains. This is evident in first-instance decisions of INPI examiners involving slogans, which are highly unpredictable and, in most cases, deny registration.

While the current law removed exclusive protection for slogans, it did not eliminate all protection. According to Articles 194 and 195(IV) and (VII), unauthorised use of slogans falls into the category of crimes for improper use of expressions and acts of unfair competition.

Protecting slogans as trademarks

Article 124(VII) of the Industrial Property Law states that “any sign or expression used just as a means of advertising is not registrable as a trademark”.

It is possible to register as a trademark any slogan that involves both an advertising and a trademark function simultaneously, but only if the slogan actually identifies and distinguishes the products or services to customers, in addition to recommending and showcasing their qualities.

However, it is not possible to assess the use of a slogan as a trademark during the examination phase, as Article 143(I) grants the trademark owner five years from registration to start using the mark; otherwise, the registration may be cancelled on the grounds of non-use.

In addition, use of the trademark or slogan is neither a condition to nor a requirement for filing an application, as Brazil has adopted an attributive system (Article 129).

In order to help with this task, and due to significant inconsistencies in interpretation by INPI examiners in analysing and examining applications involving slogans, the Brazilian Intellectual Property Association (ABPI) has drafted some guidelines in Resolution 38/2002 (available at http://tinyurl.com/resolution382002). The resolution concludes that INPI may not reject a trademark application based on the assumption or fear that it might be used merely as a sign, phrase or advertising expression in the future. Nor can INPI limit the registrability of a sign to a certain number of words. However, if a slogan is registrable and is subsequently proved to have been used just as an advertising expression, the registration should be invalidated. Unfortunately, INPI did not and does not accept the provisions of this resolution, especially given that the ABPI is not an inspection body.

Federal regional court case law on the recognition of slogans as trademarks suggests that in most cases, slogans are immediately ruled to be expressions that are used only in advertising. This is due to the difficulty of checking such expressions for distinctiveness, as there are no analytical tools available and the criteria used are random.

Protecting slogans using anti-unfair competition rules

The primary purpose of a competitive business is to attract customers to the detriment of competitors, using resources such as advertising, improved product or service quality and price reductions.

It is natural for a business to wish to expand its market share. However, all businesses need to be aware of and follow the competition rules specific to each market. In particular, they must abide by the limits imposed by free initiative and fair competition practices.

Competition can exist only if two businesses offer competing products or services at the same time. Likewise, these goods or services must be of the same kind (direct competition) or, if they are not identical, must be easily substitutable (indirect competition). Finally, there can be competition only when the goods or services are subject to the same market rules. Unfair competition occurs when players violate these market rules.

In practice, it can be difficult to distinguish fair from unfair competition. However, what can be proved is the existence of fraud by competitors to attract customers.

According to the Brazilian Supreme Court, “unfair competition requires the purpose and potential of generating confusion as to origin of the product and diverting customers” (Resp 70.015/SP, Rel Min Eduardo Ribeiro, 3rd Panel, j in March 6 1997, DJU August 18 1997, p 37859).

Article 10 bis of the Paris Convention – to which Brazil subscribed in 1883 – restrains unfair competition and attempts to define acts of unfair competition. However, this definition is generic.

Article 2(V) of the Industrial Property Law reads: “The protection of rights related to industrial property, considering its social interest and national technological and economic development, is carried out by… V – repressing unfair competition.”

In addition, it classifies certain acts as crimes of unfair competition: “Article 194. Using a trademark… slogan or sign of advertising or any other form that indicates origin other the true one, or selling or displaying for sale any product bearing such signs. Sentence – from one (1) to three (3) months’ imprisonment, or penalty. Article 195. A crime of unfair competition is committed by anyone who… IV – uses someone else’s slogan or sign of advertising, or imitates it, so as to create confusion between products or establishments… Sentence – from three (3) months to one (1) year imprisonment, or penalty.”

In practice, courts appear to find it difficult to identify:

• the originality of a slogan being imitated;
• the differences between the slogans involved; and
• the existence of unfair competition.

Using copyright to protect slogans

Slogans can be protected by copyright, provided that they are intellectual works.

Article 7 of Law 9.610/1998 defines ‘intellectual works’ as creations of the mind, as expressed by any means or applied to any support, either tangible or intangible, currently known or which may be devised in the future. However, it is unclear whether advertisements or slogans qualify in this regard.

In addition, slogans must demonstrate creativeness and originality in order to qualify for copyright protection. In the past the Court of Justice of the State of São Paulo and the Court of the Second Region have placed significant weight on these qualities when ruling whether to grant copyright protection to slogans. However, the question of whether slogans qualify for copyright protection remains a subjective and thus uncertain one.

Secondary safeguards

Secondary safeguards for slogans include registration with the Brazilian Advertising Association (ABP). In order to help advertising agencies to prove their authorship of advertising campaigns and the components thereof (ie, the parts, works, themes, advertising concepts and slogans), the ABP established a registration system which may be used by any agency accredited by the Executive Standard Rules Council.

However, while registration can help to prove authorship, it does little to help the actual owners of such slogans – while these are often created by advertising agencies, they belong to the companies that commissioned and paid for them. In addition, the ABP neither analyses nor assesses the applied-for material. The registration is merely declaratory and creates no rights.

Figure 1: APB annual statement 2003-2013

According to ABP internal information, 607 applications and 188 renewals were made between 2003 and 2013. Initially, the APB registration system was widely welcomed. However, the number of applications and renewal requests has failed to match the initial demand and has been falling steadily – as shown in Figure 1, which was published by the ABP.

Another possible method for protecting slogans is the representation system run by the National Advertising Self-Regulating Council – a non-governmental non-profit organisation that oversees ethics in Brazilian advertising. This provides for the examination of cases involving improper use of advertising works and parts thereof (including slogans), and the determination of whether such works offend or otherwise disadvantage customers.

The council’s purpose is to prevent the publication and broadcast of misleading or abusive advertising, as well as to defend freedom of commercial expression. The council acts ex officio or following receipt of a written complaint.

Complaining to the council is an effective mechanism for fighting acts of unfair competition or obtaining an acknowledgement that copyright exists in a particular advertisement or slogan.

The right to slogan exclusivity is based on at least one of five prerequisites:

• originality;
• a competitive relationship between the advertisers;
• the context in which the slogan is used;
• evidence of slogan priority; and
• the presence of the advertiser’s identity.

Even though the council is not a government body, its decisions are respected by the judiciary and nearly always followed by plaintiffs and defendants in legal actions.

Testing for distinctiveness

Slogans are examined for distinctiveness and originality. In order to help examiners in this challenging task, several criteria have been developed in an attempt to reduce subjectivity. These criteria are not intended to establish absolute rules which should be followed by INPI or the courts. Rather, they are intended to serve as a guideline for examiners and judges and lead to more consistent decisions.

In order for distinctiveness criteria to be applied to real cases, the services and products identified by the logos under review must be considered. The examples below are actual slogans taken from websites (www.mundodasmarcas.blogspot.with.br/2006/09/slogans-brasileiros.html http://lista10.org/diversos/top-10-slogans-criativos/).

Criterion 1

The first criterion is that the slogan recommend or praise the quality of certain products or services, or attract the attention of customers or users.

If it does, then the slogan has an advertising function – although this need not prevent it from having a trademark function as well. This is the case for slogans which have achieved distinctiveness on the market through secondary meaning (Criterion 8).

Criterion 2

The second criterion is that the slogan comprise creative, imaginary or unexpected elements that surprise customers.

Creativity is a vital condition for assessing distinctiveness and ensuring that slogans qualify for protection.

Criterion 3

The third criterion is that the slogan comprise figures of speech, such as metaphor, paradox or antithesis.

Figures of speech give a playful, expressive character to the products and services identified by the slogan in question, thus allowing new associations, which may cause the products and services to stand out from the competition and stick in customers’ minds.

Criterion 4

The fourth criterion is that the slogan comprise ordinary syntactical structures.

This is crucial for assessing distinctiveness, as ordinary elements are not granted protection. If slogans have a generic, necessary, ordinary, vulgar or descriptive character related to the products or services they are advertising, they are unlikely to achieve sufficient distinctiveness to qualify for protection (except for slogans that have attained distinctiveness due to secondary meaning).

Criterion 5

The fifth criterion is whether the slogan has more than one meaning.

Different meanings of the same slogan may give rise to unique characteristics, which may result in distinctiveness. However, any slogan containing a double meaning will be regarded as distinctive only if it is original and there is no similar slogan on the market.

* ‘Cultura’ is the Portuguese word for ‘culture’.

** ‘Acerte na mosca’ stands for ‘hit the jackpot’ and ‘mosca’ for ‘fly’.

Criterion 6

The sixth criterion is that the slogan require some interpretive effort.

When a slogan is regarded as vague such that its interpretation requires considerable interpretative efforts, this may help it to meet the distinctiveness prerequisite.

Criterion 7

The seventh criterion is whether other slogans on the market have similar conjunctural aspects.

Certain characteristics make up a market code and serve to identify given products or services belonging to the same market segment, which therefore cannot be appropriated exclusively by any business. However, an exception may be made where a slogan has acquired a secondary meaning.

Criterion 8

The final criterion is whether customers have become accustomed to associating a given slogan with a given product or service.

The constant, ongoing and long-term use of a certain slogan causes it to develop distinctive characteristics, eventually becoming valid as a trademark as it distinguishes a given product or service from others. This phenomenon is known as ‘secondary meaning’. Even slogans featuring weak elements may eventually develop distinctiveness.

* ‘Vale’ stands for both ‘is worth’ and ‘is equivalent’ in Portuguese.

Conclusion

Slogans are an important asset to companies, especially today, when intensive marketing can lead customers to identify them with products or services. However, the means for protecting them in Brazil are not as efficient as they once were.

Brazilian case law illustrates the fine line between trademarks and slogans. Even when applying the prerequisites of the former Industrial Property Code as parameters, judges find it difficult to detect and recognise when a slogan is original and distinctive. The lack of efficient analytical tools means that there is little consistency in decisions.

The existing safeguards – some of which are more efficient than others – fail to provide the same protection as that established by the former Industrial Property Code.

In order to safeguard slogans, Brazilian law needs to be reviewed. However, an immediate solution would be to grant more flexibility and less rigour to the bodies that analyse the level of creativity and distinctiveness in slogans, and to accept that secondary meaning can make a slogan distinctive.

Another stop-gap would be to introduce an independent mechanism to register slogans – not as trademarks, but simply as slogans. This would boost businesses’ confidence in investing, creating and keeping the market moving with their slogans.