Through the second edition of the Industrial Designs Guidelines—which comes into force on October 2, 2023—the BPTO now formally accepts industrial designs that include the representation of a trademark in their ornamental aspect, putting an end to past discussions.
Previously, in item 5.6.2 of the 1st Edition of the Industrial Designs Guidelines, the BPTO prohibited the representation of trademarks or logos in the configuration of the required industrial design, despite not being prohibited by Industrial Property Law (Law No. 9,279/1996).
Yet, we could see some cases of industrial designs encompassing trademarks (some already registered at the BPTO) being granted in the fashion industry, as shown:
The controversy over the possible registering of an industrial design formed by a trademark has already been in the news, when the BPTO allowed the registration of an industrial design formed by the logo of a famous French car manufacturer in 2020. At the time, the BPTO started to signal a change of understanding on the subject.
Still, only after years of discussions—and the opening of a public consultation on changes to the Industrial Designs Guidelines—has the BPTO come to a consolidated position, which will come into force on October 2, 2023, settling its understanding that industrial designs can encompass trademarks in their ornamental aspect.
This consolidated position is for several companies engaged also beyond the fashion industry, such as the automobile and food industries, which tend to innovate in the aesthetics of their products.
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