Although accepted by Brazilian law since 1996, the BPTO still struggles to establish reasonable standards for the application of registrability requirements of three-dimensional trademarks, which results in an approximate granting rate of 16%, considering applications for registrations made and analysed between 2014 and 2022, including those eventually granted during the period by court decision.
Even so, only few legal precedents really addressed this tricky matter. However, a recent decision from the Federal Court of Appeals of Rio de Janeiro (now final and unappealable) paved the way for a better outcome for 3D trademark applicants.
In a unanimous decision (3×0) the IP Specialized Appellate Judges overturned the decision rejecting registration of 3D trademarks corresponding to the shapes of the famous videogame controller DUALSHOCK (the versions 3 and 4), from PlayStation (owned by Sony Interactive Entertainment).
The rejecting decision was based on the understanding that the mentioned shapes are not distinctive in comparison with other models in the market, indicating a market standard and possible relationship with the nature of the corresponding product.
However, after the submission of compelling evidence, including survey and semiotic analysis, the Appellate Court considered that the 3D representation of Dualshock 3 and 4 have high level of distinctiveness and recognition in the market, fulfilling their trademark function of identifying the origin and differentiating them from competitors (also attracting consumers).
In addition, the Appellate Court considered the simple comparison of the silhouettes from different products used by the BPTO as inadequate for this distinctiveness examination, since it ignores distinctive graphic details among the products, neglecting the fact the registration protects the whole tridimensional perspective. The court also highlighted that some level of functionality associated with the details of the 3D perspective is acceptable if the general shape is not essential for the functioning of the product.
The granting of these 3D trademark registrations adds another layer of protection for Dualshock’s IP rights, significantly improving their enforceability against similar and counterfeit products placed on the market by third parties.
Also, even though non-binding, the mentioned decisions should positively impact the standards for examination of 3D trademarks by the Brazilian Trademark Office, as well as provide a secure path for IP holders affected by rejecting decisions to appeal in the Federal Courts.