PTO issues technical note on trademarks containing stars designs
With a view to updating and improving the examination of trademarks, the Brazilian Patent and Trademark Office (PTO) created a special committee called the Permanent Committee for Improvement of Trademark Examination Proceedings and Guidelines (CPAPD). On July 15 2015 the CPAPD issued Technical Note No 06/2015, entitled “Application of Items VI and XI of Article 124 of the Industrial Property Law to the examination of trademarks containing a reproduction of signs of the star rating system”.
In the technical note, the CPAPD states that, in Brazil, the star rating system for the hotel industry is foreseen by Law No 11.771/2008, which confers an official character to this classification system. Consequently, graphic elements consisting of stars displayed horizontally at regular intervals, thereby bearing an official character that represents a guarantee in the hotel industry, are not registrable in accordance with Article 124, Item XI of the Industrial Property Law. This is because this legal provision expressly prohibits the registration as trademarks of signs that reproduce or imitate an official stamp seeking to provide a guarantee of any genre or nature.
Thus, whenever an application is filed for a trademark containing stars displayed horizontally at regular intervals in connection with accommodation/hotel services, the PTO will issue an office action requesting that the applicant should declare whether it wishes to proceed with the application without the stars design. It should be noted, however, that such official action will be issued only in cases where the removal of the stars design(s) does not alter the main characteristics of the trademark as originally filed.
If the applicant wishes to maintain the stars design in the trademark, the corresponding application shall be rejected on the basis of Article 124, Item XI, of the Industrial Property Law, due to the official character of the device element. But what if such an application is filed in respect of goods or services in another field of activity?
In other areas of activity, the star rating system is often used with the same purpose of indicating a certain level of quality of the goods/services, despite the fact that such system is not regulated. In such a case, according to Technical Note No 06/2015, the PTO considers that stars designs are of common use and, consequently, cannot be appropriated as a trademark on an exclusive basis under Article 124, Item VI, of the Industrial Property Law.
Therefore, trademark applications which identify goods/services in another field of activity and incorporate stars displayed horizontally at regular intervals will bear a disclaimer to the effect that the owner is not granted any exclusive rights over the stars designs.
The CPAPD stressed that the abovementioned procedures will be applied only to signs containing stars that are undoubtedly displayed in a way that indicates a certain level of quality. On the other hand, distinct combinations and dispositions of stars are not subject to these procedures.
From a practical perspective, the new procedures shall be observed by the hotel industry, which, from now on, will not be allowed to register trademarks containing stars displayed horizontally at regular intervals.
Trademark applicants in other fields of activity who wish to obtain registrations for trademarks incorporating stars designs that indicate the quality of their goods/services should bear in mind that, unless the designs are presented in a distinctive manner, they will be considered to be of common use and competitors in the same field of activity will be able to use and/or register trademarks with the same designs.
Patrícia Lusoli, Guerra IP, Rio de Janeiro
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10