Increased focus on fictional trademarks raises questions about their protection

In a world marked by expanding industrialization and commercial activity, awareness of the importance of trademark registration is stronger than ever. Today, especially in the digital sphere, people access and consume a broad range of different content, information and advertising, and as such, trademarks have become an increasingly relevant part of their everyday lives.

This phenomenon also applies to the entertainment industry. Smartphones, computers, television, books and other media sources provide access to many forms of entertainment, giving trademarks a more prominent role in the mind of the public. by financing and sponsoring games, movies and shows. In this context, an increasing focus has been placed on fictional trademarks – those created to feature exclusively within specific entertainment productions.

Real trademarks vs. fictional trademarks

Whether real or fictional, trademarks exist to identify, individualize and distinguish different products and services. In Brazil, trademarks are protected by the Industrial Property Law – LPI (Federal Law No. 9,279/1996) and must be registered with the National Institute of Industrial Property (INPI). When the INPI grants a trademark registration application, its owner stands to benefit from the exclusive use of the trademark to distinguish products or services throughout Brazil for a ten-year period (subject to successive renewals), and may prevent any unauthorized third parties from using it.

In many cases, fictional trademarks are a response to the complicated nature of using real trademarks in audiovisual, interactive and literary works and productions, which often leads to the creation of non-existing trademarks to avoid breaching any third-party rights. Fictional trademarks also serve as an alternative when licenses cannot be obtained by making the clearance process (i.e., requesting a third-party authorization and identifying risks related to distributing the content of a given work or production) easier.

Although generally created as a solution to intellectual property issues, fictional trademarks also represent a niche with potential opportunities to explore. With an increasing number of entertainment productions achieving widespread international fame, fictional trademarks have the potential to become important assets as they capture the public’s interest. As such, certain fictional trademarks can be “defictionalized” – brought into the real world for commercial exploitation.

Examples of fictional trademarks brought to the real world include:

• Duff, a beer consumed by characters in the TV show The Simpsons that is currently sold in many establishments, including at the Universal Studios theme park;
• Central Perk, a coffee shop that features in the New York-based TV sitcom Friends, whose name is currently used by other real coffee shops in New York City;
• Bubba Gump Shrimp, from the film Forest Gump, or Wonka Chocolate, from the film Willy Wonka & the Chocolate Factory.

Protecting fictional trademarks

Like real trademarks, fictional trademarks are used when publicizing productions and can often be seen in advertisements and trailers. However, there are still extensive discussions on the best way to ensure these trademarks’ protection in Brazil. This is due to the fact that it is still necessary to define to what extent the LPI and the Copyright Law (LDA) should protect each fictional product or service, or if double protection may apply.

As previously mentioned, the LPI only guarantees the exclusive use of a trademark to distinguish products or services throughout Brazil to the holder of the registration granted by the INPI. Among the limitations set by Article 124 of the LPI, item XVII establishes that literary, artistic, or scientific works cannot be registered as trademarks (…) except with the consent of the author or titleholder. On the other hand, copyright protection is inherent in such works and does not depend on registration.

Meanwhile, Article 8 of the LDA establishes the limits of this protection, with its item VII determining that industrial and commercial use of the ideas contained in such works is not protected.

Therefore, it can be concluded both of these legal provisions can apply to fictional trademarks, depending on their creation, originality, public recognition, and applicability in the real world (their “defictionalization” potential).

The LDA contains a list of intellectual works subject to protection, which, although not exhaustive, is quite extensive. Indeed, it does open the possibility of original characters, products, or services inserted in the main work or production also being covered. As for industrial protection, it should be noted that the State may grant exclusive rights to a sign to the holder who requests it first due to the attributive nature of  trademarks.

Registering fictional trademarks

For fictional trademarks to be registered with the INPI, it must be shown that they will be used (or that there is an intention to use them) in the real world – whether via direct exploitation by their creators, or via third parties with a license to use them. Despite this, these forms of use do not always end up occurring in practice, opening the possibility of unauthorized registration attempts.

At the international level, the Duff trademark previously gained attention after it was registered by a businessman in Mexico, rather than 20^th Century Fox Films (the producer of The Simpsons). In another case, the European Union Intellectual Property Office (EUIPO) canceled the registration of The Flower Thrower, an artwork by British-based artist Banksy, after a request from greeting card company Full Color Black. It was alleged the registration request was made in bad faith, as the titleholder had no intention to use the artwork to identify products or services in the market. EUIPO’s decision to cancel the trademark registration also considered that Banksy’s identity remains publicly unknown, and thus the artist does not benefit from intellectual property rights.

In Brazil, it is also possible to identify cases in which the protection of fictitious trademarks has been discussed. However, many questions remain unanswered, such as:

• The effectiveness of authors filing an opposition to a registration application after the term of copyright protection for the work has expired;
• Whether it is possible to hold exclusive rights over works in the public domain after a trademark registration;
• Whether registering trademarks consisting of the titles or names of characters from well-known works and productions may be treated as parasitic exploitation (free-riding).

Furthermore, negative issues such as commercial failures, misconduct and bad quality products and services associated with the use of a fictitious trademark in the real world may negatively affect the ability to exploit the original work.

As the entertainment market continues to expand in Brazil and beyond, understanding the importance of properly protecting intellectual assets is as important as investing in new creations. Creators should take a pragmatic approach and consider the defictionalization potential of their fictional trademarks as a step toward avoiding their unauthorized use in the real world. They should also take necessary measures to meet the respective requirements of each jurisdiction where they intend to exploit the trademark or have it protected.

For further information about brand strategies, please see our special series Legal Challenges in Brand Positioning.