The Phonetic and visual Distinctivity in the Grant of Trademark Registration: Analysis from a court decision

The protection afforded by the Intellectual Property Law, especially in the scope of trademarks, is of paramount importance to ensure fair competition in the market and protect consumers from confusion and deceit. 

One of the fundamental elements for granting registration of a trademark is its distinctiveness, that is, its ability to identify itself 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 scope of trademark law, so this article proposes an analysis of the phonetic and visual distinctiveness in the granting of trademark registration, focusing on jurisprudential interpretation, from an emblematic legal decision.

The Phonetic and Visual Distinctivity: Concept and Importance

Phonetic distinctiveness refers to the ability of a brand to be distinguished by its auditory pronunciation.

Visual distinctiveness is a crucial dimension in the context of brand protection and consumer perception. While phonetic distinctiveness concerns differentiation through auditory pronunciation, visual distinctiveness focuses on the ability of a brand to stand out and be identified through its visual presentation.

This means that even if two marks are orthographically different, if they are phonetically similar, they can cause confusion in the consumer. Therefore, phonetic and visual distinctiveness are essential to ensure that a mark is easily identifiable and differentiable from others on 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 do not have distinctiveness are not registrable, which is an indispensable condition for legal protection.

 Distinctiveness can manifest itself in various ways, whether visual, phonetic or conceptual, and is evaluated taking into account the characteristics of the market and consumers.

Concrete case: Mixed brands “UOTZ” 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 registration of the mixed trademark UOTZ, which was administratively requested by its owner before the National Institute of Industrial Property (INPI), INPI process no. 909.313.202 required by UOTZ INTELECTURA DE MERCADO LTDA.

The trademark was requested in its mixed form by its owner and was rejected based on precedence arising from the brand “WOTZ”, as can be seen in the mirror of the administrative process with INPI:

The UOT Z brand was rejected due to the mixed trademark “WOTZ” previously granted by INPI on 08/03/1989, according to administrative process no. 814.693.920, which can be seen below:

It is noted above that the brands in question are mixed and have the following logos:

The holder of the UOT Zz brand appealed in the decision to reject the INPI, however, the Federal Authority maintained the rejection, that is, according to the understanding of the National Institute of Industrial Property, the brands “UOTZ” and “WOTS” could not live in the market.

Thus, once the analysis of the application for registration of the UOT Zz brand before that Federal Authority was exhausted, it was necessary to seek the solution of the case before the Judiciary, and thus, to be observed the phonetic distinctiveness and distinctiveness in the activities carried out by them.

Jurisprudential Analysis

The company UOTZ INTELECTA DE MERCADO LTDA, which requested the registration of the trademark UOT Z, filed a lawsuit before the Federal Court of the State of Rio de Janeiro, in order to annul the decision made by the INPI that maintained the rejection of the registration request.

The action had its requests dismissed in the 1st Instance, because it was understood, at first, now in the judicial sphere, that the decision of the INPI to reject the registration of the UOT Zz mark, would be correct, which motivated the filing of an appeal so that the Federal Regional Court of the State of Rio de Janeiro could analyze the issue.

Thus, given the insistence of the owner of the UOT Zens trademark, and also the relevant grounds that guided the appeal, a recent decision was made by that Federal Regional Court of the 2nd Region located in the State of Rio de Janeiro, in the case no. 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: the phonetic and visual distinctiveness in the granting of trademark registration. 

The core of the controversy was the interpretation of item XIX of article 124 of Law no. 9,279-96, which establishes the prohibitions to the granting of trademark registration when there is identity or similarity that could cause confusion between identical, similar or similar products or services. In this context, both the INPI and the first instance sentence based their decisions on the phonetic similarity between the expressions “UOT” 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 sentence 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 to grant trademark registration is not restricted only to phonetic similarity between signs.

Article 122 of Law 9,279/96 states that a trade mark must be capable of distinguishing the goods or services of an undertaking from those of other undertakings. 

The Federal Regional Court of the State of Rio de Janeiro annulled the administrative decision of the INPI, and reformed the judgment issued by the Judiciary, granting the brand UOT Zz, because the spellings of the expressions “UOTZ” AND”, although they may retain phonetic similarity, present differences easily verifiable by the consumer, in order to meet the provisions of article 122 of Law 9,279/96, and the activities carried out by companies are not conflicting.

Thus, 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 concept of distinctiveness could result in the unfair denial of legitimate trademark registrations, harming development and competition in the market. 

In short, the decision made 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 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 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 marks. 

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 trademarks already registered. 

It is worth mentioning that, in the present case, one of the allegations of great importance concerns the fact that the proprietor of the brand ”OTS” did not even use the trademark faithfully as requested before the INPI, which certainly contributed to the outcome of the decision rendered by the Court.

In addition, the proprietor of the brand “pioneira” acted with permissiveness in the coexistence between the brands, as it did not even rebel against the application for registration of the brand “UOTZ”, a fact that weakens it, especially in identical segments.

Thus, it is necessary to ensure effective protection to avoid conflicts in the market, as demonstrated by the case-law decision under consideration.

The process under analysis in this article was sponsored by the team of the law firm Montanes Albuquerque Advogados, which has been working for years in the area of Intellectual Property, contributing to the construction of ideas and seeking the consolidation of the same through study and information.