The protection granted by the Intellectual Property Law, especially in the field of brands, it is of utmost importance to ensure fair competition in the market and protect consumers from confusion and deception.
One of the fundamental elements for the granting of a trademark registration is its distinctiveness, that is to say, your ability to identify yourself as products or services in a unique and exclusive way in the market.
In this context, the phonetic and visual distinctiveness plays a crucial role in the field of trademark law, for what, this article proposes an analysis of phonetic and visual distinctiveness in the granting of trademark registration, with a focus on jurisprudential interpretation, based on an emblematic legal decision
On Phonetic and Visual Distinctiveness: Concept and Importance
Phonetic distinctiveness refers to a brand's ability to be distinguished by its auditory pronunciation
Visual distinctiveness is a crucial dimension in the context of trademark protection and consumer perception. While phonetic distinctiveness relates to differentiation through auditory pronunciation, visual distinctiveness focuses on a brand's ability to stand out and be recognized through its visual presentation
This means that, even if two brands are orthographically different, if they are phonetically similar, can cause confusion for the consumer.Therefore, phonetic and visual distinctiveness are essential to ensure that a brand is easily identifiable and distinguishable from others in the market.
In the context of trademark law, distinctiveness is one of the fundamental requirements for the granting of registration.
The Industrial Property Law establishes that trademarks that lack distinctiveness are not registrable, being this an indispensable condition for legal protection
Distinctiveness can manifest in various ways, be visual, phonetic or conceptual, and is assessed taking into account the characteristics of the market and consumers
Concrete case: Mixed marks "UOTẒ" and "WOTS"
In order to collaborate with the knowledge and application of phonetic and visual distinctiveness, we can mention the case involving the application for the registration of the mixed trademark UOTẒ, to which was requested administratively by its holder before the National Institute of Industrial Property (INPI), INPI process n.º 909.313.202 required by UOTZ MARKET INTELLIGENCE LTD
The trademark was requested in its mixed form by its owner and was denied based on prior use of the trademark "WOTZ", as can be seen in the mirror of the administrative process with the INPI
A marca UOTẒ teve seu indeferimento em razão da marca mista “WOTZ” concedida anteriormente pelo INPI em 08/03/1989, according to administrative process no.º 814.693.920, which can be seen below
It is verified above that the trademarks in question are mixed and have the following logos
The holder of the UOTẒ brand appealed the INPI's decision to deny, however, the Federal Autarchy upheld the denial, that is to say, according to the understanding of the National Institute of Industrial Property, the brands "UOTẒ" and "WOTS" could not coexist in the market
In this way, once the analysis of the trademark registration request for UOTẒ before that Federal Authority is exhausted, it was necessary to seek the solution of the case before the Judiciary, і так,to observe the phonetic distinctiveness and the distinctiveness in the activities carried out by them
Jurisprudential Analysis
The company UOTZ MARKET INTELLIGENCE LTD, who requested the registration of the UOTẒ trademark, filed the lawsuit before the Federal Court of the State of Rio de Janeiro, in order to have the decision made by the INPI that upheld the denial of the registration request annulled
The action had its requests deemed unfounded in the 1st Instance, so it was understood, at first, now already in the judicial sphere, that the decision of the INPI to deny the registration of the UOTẒ trademark, would be correct, what motivated the filing of an appeal for the Federal Regional Court of the State of Rio de Janeiro to analyze the issue
Thus, given the insistence of the holder of the UOTẒ brand, and still, the relevant grounds that guided the appeal, a recent decision was issued by that Regional Federal Court of the 2nd Region located in the State of Rio de Janeiro, in the case files of process n.º 5023289-72.2018.4.02.5101, where the above legal situation was analyzed and brought to light the crucial debate in the field of industrial property law: phonetic and visual distinctiveness in the granting of trademark registration.
The heart of the controversy lay in the interpretation of item XIX of article 124 of Law No. 9.279-96, that establishes the prohibitions on granting trademark registration when there is identity or similarity likely to cause confusion between identical products or services, similar or related. In this context, both the INPI and the first instance ruling based their decisions on the phonetic similarity between the expressions "UOTẒ" and "WOTS", especially through an analysis that considered the anglicization of the sounds of the corresponding letters
In this context, both the INPI and the first instance ruling based their decisions on the phonetic similarity between the expressions, especially through an analysis that considered the anglicization of the sounds of the corresponding letters.
Still, it is crucial to emphasize that the distinctiveness required for the granting of trademark registration is not limited only to the phonetic similarity between the signs
Article 122 of Law No. 9.279/96 estabelece que a marca deve ser suscetível de distinguir os produtos ou serviços de uma empresa daqueles de outras empresas.
The Federal Regional Court of the State of Rio de Janeiro, overturned the administrative decision of the INPI, and, overturned the sentence issued by the Judiciary, granting, the brand UOTẒ, because the spellings of the expressions "UOTẒ" and "WOTZ" although they may have phonetic similarity, they present easily verifiable differences for the consumer, in order to comply with the provisions of article 122 of Law No. 9.279/96, being the activities carried out by the companies non-conflicting
Thus, even though there is phonetic similarity, it is imperative to consider whether the spellings of the expressions show differences that allow for their identification by the average consumer
A restrictive interpretation of the concept of distinctiveness could result in the unfair denial of legitimate trademark registrations, harming development and competition in the market.
Коротко, the decision issued by the Federal Regional Court of the 2nd Region highlights the importance of a comprehensive and contextualized analysis in the process of granting trademark registration, especially regarding phonetic and visual distinctiveness and such an approach aims to ensure a balance between the protection of industrial property rights and the promotion of competition and innovation in the market
Conclusion
Phonetic and visual distinctiveness play a crucial role in granting trademark registration, being essential requirements to ensure legal protection and clear identification in the market
The jurisprudential analysis carried out in this article highlights the importance of a balanced interpretation of phonetic and visual distinctiveness, considering not only the similarity in pronunciation, but also the differences in spellings and the visual presentation of the brands.
Therefore, when applying for the registration of a trademark, it is essential to consider not only its spelling, but also its pronunciation and phonetic and visual distinctiveness in relation to other registered brands.
It is worth mentioning that, in the specific case, one of the claims of great importance concerns the fact that the owner of the "WOTS" trademark did not even use the trademark in a manner faithful to that which was requested before the INPI, what certainly contributed to the outcome of the decision rendered by the Court
Moreover, the owner of the "pioneering" brand acted permissively in the coexistence between the brands, as it did not even oppose the request for registration of the trademark "UOTẒ" at the time of the application, fact that weakens her, mainly in identical segments
Thus, it is necessary to ensure effective protection to avoid conflicts in the market, as demonstrated by the analyzed jurisprudential decision
The process under analysis in this article was sponsored by the team from the Montañés Albuquerque Lawyers office, which has been operating for years in the field of Intellectual Property, contributing to the construction of ideas and seeking their consolidation through study and information
