The protection provided by the Intellectual Property Law, especially in the area of trademarks, is of utmost importance to ensure fair competition in the market and to protect consumers from confusion and deception.
One of the fundamental elements for granting a trademark registration 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 scope of trademark law, therefore, this article proposes an analysis of phonetic and visual distinctiveness in the granting of trademark registration, focusing on the jurisprudential interpretation, based on an emblematic legal decision.
Phonetic and Visual Distinctiveness: Concept and Importance
Phonetic distinctiveness refers to the ability of a mark 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 identified through its visual presentation.
This means that, even if two brands are spelled differently, if they are phonetically similar, they 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 granting registration.
The Industrial Property Law establishes that trademarks that lack distinctiveness are not registrable, which is an essential condition for legal protection.
Distinctiveness can manifest itself in different ways, whether visual, phonetic or conceptual, and is assessed taking into account the characteristics of the market and consumers.
Specific case: Mixed trademarks “UOTẒ” and “WOTS”
In order to contribute to the knowledge and application of phonetic and visual distinctiveness, we can mention the case involving the registration request of the mixed mark UOTẒ, which was filed administratively by its owner with the National Institute of Industrial Property (INPI), INPI process no.º 909.313.202 requested by UOTZ MARKET INTELLIGENCE LTD.
The trademark was requested in its mixed form by its owner and was rejected based on prior rights arising from the trademark “WOTZ”, as can be seen in the administrative process mirror with the INPI:
The UOTẒ brand was denied due to the previously granted mixed trademark "WOTZ" by INPI on 03/08/1989, according to administrative process no.º 814,693,920, which can be seen below:
It can be seen above that the brands in question are mixed and have the following logos:
The owner of the UOTẒ brand appealed the INPI's decision to reject the application, however, the Federal Agency upheld the rejection, that is, according to the understanding of the National Institute of Industrial Property, the brands “UOTẒ” and “WOTS” could not coexist in the market.
Thus, once the analysis of the application for registration of the UOTẒ trademark before that Federal Agency had been exhausted, it was necessary to seek a solution to the case before the Judiciary, and thus, the phonetic distinctiveness and distinctiveness in the activities carried out by them could be observed.
Jurisprudential Analysis
The company UOTZ INTELIGÊNCIA DE MERCADO LTDA, which applied for registration of the UOTẒ trademark, filed a lawsuit with the Federal Court of the State of Rio de Janeiro, in order to have the decision handed down by the INPI that upheld the rejection of the registration application annulled.
The action had its claims dismissed in the 1st Instance, as it was understood, at first, now in the judicial sphere, that the INPI's decision to reject the registration of the UOTẒ trademark was correct, which motivated the filing of an appeal so that the Regional Federal Court of the State of Rio de Janeiro could analyze the issue.
Thus, given the insistence of the owner of the UOTẒ brand and 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 case no.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 intellectual property law: phonetic and visual distinctiveness in the granting of trademark registration.
The core of the controversy lay in the interpretation of item XIX of article 124 of Law No. 9,279-96, which establishes prohibitions on granting a trademark registration when there is identity or similarity likely to cause confusion among identical, similar, or related products or services. In this context, both the INPI and the first-instance judgment based their decisions on the phonetic similarity between the expressions "UOTẒ" and "WOTS," primarily through an analysis that considered the anglicization of the sounds of the corresponding letters.
In this context, both the 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 required for granting trademark registration is not restricted to the phonetic similarity between the signs.
Article 122 of Law No. 9,279/96 states that a trademark 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 administrative decision of the INPI, and reformed the sentence handed down by the Judiciary, granting the trademark UOTẒ, because the spellings of the expressions “UOTẒ” and “WOTZ”, although they may have phonetic similarity, present differences that are 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 allow their identification by the average consumer.
A restrictive interpretation of the concept of distinctiveness could unjustly deny legitimate trademark registrations, harming development and competition in the market.
In short, the decision handed down by the Regional Federal Court of the 2nd Region highlights the importance of a comprehensive and contextualized analysis in the process of granting trademark registration, especially with regard to 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 guarantee legal protection and clear identification in the market.
The jurisprudential analysis conducted 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 spelling and the visual presentation of the trademarks.
Therefore, when applying for a trademark registration, it is essential to consider not only its spelling but also its pronunciation and phonetic and visual distinctiveness compared to other already registered trademarks.
It is worth mentioning that, in the specific case, one of the allegations of great importance concerns the fact that the owner of the trademark “WOTS” did not even use the trademark in a manner faithful to that which was requested before the INPI, which certainly contributed to the outcome of the decision handed down by the Court.
Furthermore, the owner of the “pioneer” brand acted permissively in the coexistence between the brands, as it did not even object to the request to register the “UOTẒ” 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 case law decision analyzed.
The process analyzed in this article was sponsored by the team at Montañés Albuquerque Advogados, which has been working in the area of Intellectual Property for years, contributing to the construction of ideas and seeking to consolidate them through study and information.
