A system for building the distinctiveness of three-dimensional trademarks

Abstract

The study addresses the legal requirements for building the distinctiveness needed for the protection of tridimensional trademarks and the strategic marketing measures aimed at the market's associating the object with the designation of the product's origin. It distinguishes the tridimensional trademark from trade dress, describes the requirements applied by the INPI for registration and contrasts them with legal writing and judicial decisions, examining Article 124, XXI, of Law No. 9,279/96, which denies protection to the necessary, common or ordinary shape of the product or of its packaging and to a shape that cannot be dissociated from a technical effect. It examines absolute distinctiveness in relation to the common domain and relative distinctiveness in relation to third parties' trademarks, cumulative or alternative protection of the object as an industrial design, the acquisition of distinctiveness through secondary meaning, and a grid of tests for assessing the gain in distinctiveness and compliance with the legal requirements. The text holds that the bar on registering a functional shape is absolute and cannot be overcome by secondary meaning, and that the marketing strategy must stress distinctiveness or functionality according to the protection sought under Law No. 9,279/96.