Registration of Trademarks before the National Institute of Industrial Property by Political Parties
An interesting and timely issue to be addressed, due to the electoral period, is the registration of the Names, Acronyms and Symbols of Political Parties in the National Institute of Industrial Property (INPI) and their legal protection, similar to that granted to other companies and associations in opposition to the protection granted by the Electoral Law to Parties registered in the Superior Electoral Court – TSE.
In this sense, it is important to emphasize that the Electoral Law (Law Nº 9,096/95) assures exclusivity to the name of Political Parties, their Acronym and Symbol, as we see below:
Art. 7 The Political Party, after acquiring legal personality in the form of civil law, may register its statute before the Superior Electoral Court
§1 Only the registration of the statute of a Political Party that has a national character is allowed , considering as such the one that proves, in a period of two years, the support of voters not affiliated to a Political Party, corresponding to at least 0,5% of the votes cast in the last general election for the House of Representatives, not counting blank and null votes, distributed by one-third or more of the States, with a minimum of 0.1% of the electorate who voted for each of them.
§2 Only the Party that has registered its statute with the Superior Electoral Court may participate in the electoral process, receive resources from the Party Fund and have free access to radio and television, under the terms established in this Law.
§3 Only the registration of the party’s statute in the Superior Electoral Court ensures the exclusivity of its denomination, acronym and symbols, prohibited the use, by other Parties, of variations that may cause error or confusion.
As can be seen, after acquiring legal personality, in the terms of the Civil Law, the Political Party may request its registration with the TSE, provided that it meets the national requirements of §1st of article 7th, then having the right to receive resources from the Party Fund, have free access to radio and television and get “exclusivity of its denomination, acronym and symbols, being prohibited the use, by other parties, of variations that may lead to error or confusion”.
However, in order to have the protection of §3rd of article 7th of Law Nº 9,096, the Political Party needs to prove requirements of national representation, not accessible to all Parties, especially for those recently created .
Another issue that must be observed is that the protection provided by the Electoral Law has the sole purpose of avoiding confusion of parties names or their acronyms by the voters during the electoral process, forbidding the use of identification signs that may cause mistake or confusion.
On its turn, the kind of protection granted by the Industrial Property Law – LPI (Law Nº 9,279/1996) is better suited to protect the name and signs of Political Parties in a permanent way, not only during the electoral process, allowing Parties to safely and adequately use their signs in acts of political proselytism outside the voting period, especially, but not only, through the sale of t-shirts, caps, car stickers or all sorts of products that bear their brand (denomination, acronym and symbols) as a way, not only to raise funds for the maintenance of the Party and expansion of its political activity after the electoral period, but also as a way of engaging its members and sympathizers, who, by using the products with the party signs, externalize their political preferences, in a way of individual expression of their political and world view or as a way of looking for third parties who have the same political thinking and world view, as done, for example, by soccer clubs, when selling their team’s shirts to their fans.
Thus, Political Parties, once their statutes are registered in the Civil Registry of Legal Entities, can obtain the registration of their name, acronym and symbols in the INPI, regardless of the protection granted by the TSE, as a way of having the best legal protection for the full exercise of their political activity, supported by articles 122 and 128 of the LPI:
Art. 122. Visually perceptible distinctive signs that are not included in the legal prohibitions are susceptible of being registered as a trademark.
Art. 128. Individuals or legal entities governed by public or private law may apply for trademark registration.
It is important to mention that the Superior Court of Justice, in a decision recently endorsed by the Brazilian Supreme Court, held that Political Parties have the possibility of registering trademarks before the INPI, as we can see below:
SPECIAL APPEAL – OBLIGATION TO DO – REGISTRATION OF A PARTY SYMBOL AS A TRADEMARK – POSSIBILITY – ABSENCE OF LEGAL PROHIBITION AND INEXISTENCE OF ANTINOMY BETWEEN THE RULES THAT REGULATE IN DIFFERENT SPHERES THEIR ADOPTION AND EXPLOITATION.
Hypothesis: the original demand seeks to impose an obligation not to do so in order to prevent the defendant from using an imitation mark. The discussion is limited to: a) the feasibility of political symbols being registered as trademarks with the BPTO; b) the possibility of political associations (civil associations or Parties) to economically explore the use of branded products/services, even if they do not primarily carry out business activities; and, finally, c) the feasibility of the coexistence of dual legal protection against the specific rules of electoral and trademark law.
3. There is no prohibition contained in Law No. 9,279/1996 that prevents the registration of symbols by associations or political parties, so the Judiciary cannot give an extensive prohibitive interpretation of what is not contained in the legal text and which is not corresponds to the literal will of the legislator, above all, to justify the withdrawal of a right or the forfeiture of a claim.
4. It is also verified, from the analysis of the electoral legislation, that the symbols of political parties, regulated by Law no. 5th, item V, “a”, of Resolution No. 23,546/2017 of the Superior Electoral Court, party associations can use, as a form of income arising, from the economic use of their symbol, as a brand that identifies them with their associates and sympathizers, through the sale of products.
5. Dual legal protection appears to be feasible, since even outside the electoral period and sphere, the political party, as a form of self-financing, can economically exploit its symbol through the licensing of products or services for which it has a trademark registration.
6. Pursuant to Law No. 9,096/1995, only the political party that has registered its statute with the Superior Electoral Court can participate in the electoral process, receive resources from the Party Fund and have free access to radio and television, under the terms of art. 7, § 2, of Law No. 9,096/1995. Likewise, with the registration of its regimental constitution in the TSE, the party guarantees the exclusivity of its denomination, acronym and symbols to be used in campaigns and elections, being prohibited the use by other parties of variations that may mislead the citizen or confusion during elections.
7. If the distinctive sign is intended for the economic exploitation of goods, such as the sale of clothing, streamers and other various accessories, the trademark recognized by the National Institute of Industrial Property – INPI must be protected, as the protection trademark, pursuant to art. 123 of Law No. 9,279/1996, is used restrictively to distinguish a product or service from another of an identical or similar nature, within the scope of its commercialization in the consumer market.
8. In summary, it is understood that it is possible: a) to register political symbols as trademarks with the INPI; b) the economic exploitation by political associations (civil associations or parties) of the use of branded products/services, even if they are not primarily engaged in business activities; and, finally, c) the coexistence of dual legal protection against the specific rules of electoral and trademark law.
9. Appeal partially granted.
SPECIAL APPEAL No. 1,353,300 – DF (2012/0238532-8) MINISTER RAPPORTEUR MARCO BUZZI
Thus, Political Parties can, and should obtain due protection of their denomination, acronym and symbols, in the INPI, in order to avail themselves of the prerogatives granted by the LPI to the holders of trademark registrations against unauthorized use by third parties.