Protecting a sound or melody as a trade mark is challenging—applicants must not only accurately represent their sign in a way that meets the expectations of their local Trade Mark Registry, but also prove their sound, noise or jingle is sufficiently distinctive to justify protection.
In this second of a series of posts, we continue our discussion of the diverse approaches to registering sound marks in different jurisdictions and the challenges applicants face. Read Part 1 here.
Sound Marks in Brazil
The Brazilian trade mark system protects signs capable of being visually perceptible provided they distinguish the goods or services of one enterprise from the goods or services of other enterprises.
Despite having this visual requirement—which would in principle exclude non-conventional marks such as sounds from trademark protection—the Brazilian legal system is malleable, permitting the registration of certain non-traditional marks such as holograms, motions, gestural and position marks.
To date, there are no sound mark registrations in Brazil because currently the registry has taken the view that they are not allowable. However, trademarks consisting of sounds, scents, colours per se and combinations of colours can be safeguarded by unfair competition rules. “Article 124, VIII, of the IP Law—colours and their names, except when arranged or combined in an unusual and distinctive manner;” Distinctive combination of colours used as marks can be registered. For example: Registration No. 006088244, owned by Visa International Service Association.
Protection against unfair competition practices is broadly applied in Brazil, protecting, for instance, the goodwill associated with trademarks. The local legislation aims to protect brand owner investment in trade mark protection and avoid any abuse of the trade mark system such as for example, free riding.
Some local commentators argue that the requirement that trademarks be “visually perceptible” in Brazil should be understood as being similar to the European requirement of graphical representation. This would potentially make room for non-traditional marks such as sounds or smells to be eligible for trade mark protection in Brazil. However, the Brazilian system is currently not subject to the “graphical representation” requirement and the Trade Mark Registry (INPI) would need to update its manual of trade mark practice and the respective examination guidelines, amongst other procedural measures.
Interestingly, the draft agreement of the Free Trade Area of the Americas has recommended that its members do not follow the “visually perceptible” requirement for trade mark applications which could potentially indicate the Brazilian system is moving towards the European approach. Approved in 2003.
The Brazilian trademark system is therefore one in evolution when it comes to non-conventional trademarks. Although a sound mark does not currently qualify for trademark protection, it might be eligible for registration in the future provided the “visually perceptible” requirement moves closer to the European model.