BRAZIL: Arbitrary Words Can Be Protected as Works of Art

The Brazilian Patent and Trademark Office (PTO) recently refused a trademark application for a made-up word from the HBO television series Game of Thrones that has become so well known as to fall within copyrightable standards.

Almost everyone has heard of the HBO television series Game of Thrones. And all who have watched some episodes probably know that “Daenerys Targaryen,” the character played by Emilia Clarke, was also called the “Mother of Dragons.”

Daenerys had a specific command to order the dragons to spit fire at enemies: “dracarys,” a completely arbitrary word in the fictitious “Valyrian” language created by George R.R. Martin, the author of the books behind the show.

“Dracarys” is not the name of a character, or a book, or a movie/series—all examples of elements that would be protected by copyright. “Dracarys” is just a made-up word in a fantasy language.

Nevertheless, the Brazilian PTO decided that “dracarys” fell within the prohibition that bars registration of “literary and artistic work” protected by Copyright Law when it rejected application No. 917136322 for DRACARYS in Class 33 (multiple alcoholic beverages). This decision was published on May 19, 2020, and no appeal was filed by the administrative deadline of July 30, 2020.

Application No. 917136322 was filed on April 16, 2019, and its description of goods included multiple alcoholic beverages in Class 33. On July 17, 2019, HBO opposed this application based on a provision of the Brazilian Intellectual Property Law which prohibits the registration, as trademarks, of “literary, artistic or scientific works, as well as titles that are protected by copyright and are liable to cause confusion or association.”

In its turn, the Brazilian Copyright Law establishes that “protected intellectual works are the creations of the spirit, expressed by any means or fixed in any carriers, tangible or intangible, already known or to be developed in the future” and cites as examples “texts of literary, artistic or scientific works” and “audiovisual works.”

In principle, “dracarys” would not fit the criteria, but HBO convinced the PTO that there was likelihood of association based on two main aspects: (1) as an arbitrary word, there was no reason for the applicant to choose it as a trademark, as he obviously did not coin it, so he was clearly trying to benefit from the fame of the series; and (2) the connection between a dragon spitting fire and a burning sensation in one’s throat caused by alcoholic beverages.

HBO’s opposition was upheld, and the examiner concluded, that from a copyright perspective, despite the dubious nature of the word “dracarys,” this arbitrary word became famous enough that it could cause undue association if a competing product was launched bearing it as a trademark.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2020 International Trademark Association