The protection provided by the Intellectual Property Law, especially in the field of trademarks, 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 registration of a trademark is its distinctiveness, that is, its ability to identify itself as products or services uniquely and exclusively in the market.
In this context, phonetic and visual distinctiveness plays a crucial role in the field of trademark law, for this reason, this article proposes an analysis of phonetic and visual distinctiveness in the granting of trademark registration, focusing on jurisprudential interpretation, based on a landmark legal decision.
Phonetic and Visual Distinctiveness: Concept and Importance
Phonetic distinctiveness refers to the ability of a trademark 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 the ability of a trademark to stand out and be identified through its visual presentation.
This means that even if two trademarks are spelled differently, if they are phonetically similar, they can cause confusion to consumers. Therefore, phonetic and visual distinctiveness are essential to ensure that a trademark 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 do not have distinctiveness are not registrable, as this is an essential condition for legal protection.
Distinctiveness can manifest in various forms, whether visual, phonetic, or conceptual, and is evaluated considering market characteristics and consumers.
Case study: Mixed marks “UOT” and “WOTS”
In order to contribute to the understanding and application of phonetic and visual distinctiveness, we can mention the case involving the application for registration of the mixed mark UOT, which was requested administratively by its owner before the National Institute of Industrial Property (INPI), INPI process no. 909.313.202 requested by UOTZ INTELIGÊNCIA DE MERCADO LTDA.
The mark was requested in its mixed form by its owner and was denied based on prior registration of the “WOTZ” mark, as can be seen in the administrative process record with the INPI:
The UOT mark was denied due to the mixed mark “WOTZ” previously granted by the INPI on 08/03/1989, according to administrative process no. 814.693.920, which can be seen below:
It is evident that the marks in question are mixed and have the following logos:
The owner of the UOT mark appealed the INPI’s denial decision, however, the Federal Agency upheld the denial, that is, according to the understanding of the National Institute of Industrial Property, the “UOT” and “WOTS” marks could not coexist in the market.
Thus, once the analysis of the UOT® brand registration request before that Federal Agency was exhausted, it was necessary to seek a solution to the case before the Judiciary, and thus, phonetic distinctiveness and distinctiveness in the activities carried out had to be observed.
Jurisprudential Analysis
The company UOTZ INTELIGÊNCIA DE MERCADO LTDA, which requested the registration of the UOT® trademark, filed a lawsuit before the Federal Justice of the State of Rio de Janeiro in order to have the decision issued by the INPI that maintained the refusal of the registration annulled.
The lawsuit had its requests deemed unfounded in the 1st Instance since it was understood, at the first moment, already in the judicial sphere, that the INPI’s decision to refuse the registration of the UOT® brand was correct, which led to the filing of an appeal so that the Federal Regional Court of the State of Rio de Janeiro could analyze the matter.
Therefore, due to the insistence of the owner of the UOT® trademark, and also the relevant grounds that guided the appeal, a recent decision was issued by that Federal Regional Court of the 2nd Region located in the State of Rio de Janeiro, in the case file no. 5023289-72.2018.4.02.5101, where the legal situation above 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 core of the controversy resided in the interpretation of section XIX of article 124 of Law No. 9,279-96, which establishes the prohibitions on granting a trademark registration when there is identity or similarity likely to cause confusion between identical, similar, or related products or services. In this context, both INPI and the first-instance judgment based their decisions on the phonetic similarity between the expressions ‘UOTʒ’ and ‘WOTS’, especially through an analysis that considered the anglicization of the sounds of the corresponding letters.
In this context, both INPI and the first-instance judgment 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.
However, it is crucial to emphasize that the distinctiveness necessary for granting a trademark registration is not limited just to the phonetic similarity between signs.
Article 122 of Law No. 9,279/96 establishes that the mark must be capable of distinguishing the products or services of one company from those of other companies.
The Regional Federal Court of the State of Rio de Janeiro annulled the INPI’s administrative decision and reversed the judgment issued by the judiciary, granting the UOTʒ mark because the spellings of the expressions ‘UOTʒ’ and ‘WOTZ,’ although they may have phonetic similarity, show differences easily verifiable by the consumer, in order to comply with the provisions of Article 122 of Law No. 9,279/96, with the activities carried out by the companies not conflicting.
Therefore, even if there is phonetic similarity, it is imperative to consider whether the spellings of the expressions present differences that enable their identification by the average consumer.
A restrictive interpretation of the distinctiveness concept could result in the unfair denial of legitimate trademark registrations, harming development and competition in the market.
In conclusion, the decision issued by the 2nd Regional Federal Court highlights the importance of a comprehensive and contextualized analysis in the trademark registration granting process, especially concerning phonetic and visual distinctiveness, aiming 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 trademark registration granting, being essential requirements to ensure legal protection and clear identification in the market.
The jurisprudential analysis conducted in this article emphasizes the importance of a balanced interpretation of phonetic and visual distinctiveness, considering not only the similarity in pronunciation, but also the differences in spelling and visual presentation of the marks.
Therefore, when applying for a trademark registration, it is essential to consider not only its spelling, but also its pronunciation, phonetic distinctiveness, and visual distinctiveness in relation to other already registered marks.
It is worth mentioning that, in the specific case, one of the allegations of great importance relates to the fact that the owner of the mark ‘WOTS’ did not even use the mark faithfully as requested before the INPI, which certainly contributed to the outcome of the decision issued by the Court.
Furthermore, the owner of the “pioneer” brand acted with permissiveness in the coexistence of the brands, as she did not even object to the registration request of the “UOTᶒ” brand when the application was made, a fact that weakens it, especially in identical segments.
Therefore, it is necessary to ensure effective protection to avoid conflicts in the market, as demonstrated by the analyzed jurisprudential decision.
The process analyzed in this article was sponsored by the team at Montańés Albuquerque Advogados office, which has been working for years in the Intellectual Property field, contributing to the development of ideas and seeking their consolidation through study and information.
