1. General provisions
As a rule, trademark is a distinctive sign capable to identify a single commercial source of goods and services.
However, a mark that is not inherently distinctive, due to its generic or descriptive character, can acquire distinctiveness through its continued and intense commercial use, ultimately associating itself with a single commercial source. This phenomenon is called "secondary meaning".
The "secondary meaning" institute (or "acquired distinctiveness") although recognized and regulated by many countries, is not currently applied by the BPTO.
2. Current rules
Historically, the "secondary meaning" institute has been accepted by the BPTO as an exception to Article 6 quinquies of the Union Paris Convention, which refers to the "telle quelle" principle, exclusively when the trademarks are already registered abroad.
However, as said institute is not regulated by the BPTO, the trademark holders must typically file a lawsuit before Brazilian Federal Courts, presenting consistent evidence of the acquired intrinsic and extrinsic distinctiveness of the concerned trademark, such as consumer surveys, sales volume of the marked products, quantity of advertising, among others.
3. BPTO's strategic plan 2023-2026: towards the recognition of the "secondary meaning" institute
The BPTO published on March 27, 2023 its Strategic Plan for the period 2023-2026, including the objective to develop within said three years period technical examination procedures for the recognition of the acquired distinctiveness ("secondary meaning") of marks regulation of the "secondary meaning" institute, as well as technical examination procedures for the registration of other non-traditional marks, such as olfactory and sound marks.
This is good news towards the probable recognition and regulation of the "secondary meaning" institute by the BPTO, which is in line with the Brazilian doctrine and case law, as well as the understanding of the main Industrial Property offices around the world.
Nevertheless, and according to the BPTO´s strategic plan, there are still some tasks to be conducted before a formal recognition and regulation of the "secondary meaning" institute, such as: to carry out an international comparative study on "acquired distinctiveness"; to Raise stakeholder needs and expectations about "acquired distinctiveness"; to conduct a Regulatory Impact Analysis (RIA) on "acquired distinctiveness"; to conduct a technical study for the elaboration of technical procedures on "acquired distinctiveness" and internal processes redesign; to carry out a public consultation on the changes to be made to trademark regulations and the BPTO´s Manual on Trademark; as well as to adapt internal IT systems.
In any case, the BPTO´s former trademark board of Directors published at the end of 2022, a technical study, that could be interpreted on the sense of the recognition and regulation of the "secondary meaning" institute..
According to the referred study, no change in the Brazilian Industrial Law would be necessary to implement the "secondary meaning" institute in connection with trademark registrations.
As for the procedures that would need to be followed to argue the "secondary meaning" of the concerned trademark, the study suggests that it could be claimed by means of an appeal against the rejection of a trademark application based on its non-distinctiveness, by presenting the following evidence:
- Consumer perception survey
- Sales volume of the product marked
- Trademark time of use
- Intensity of use of the mark in the market
- Consumers´ testimonial/ affidavit
- Business and professional associations´ affidavit
- Market Investment
- Discourse analysis used in media
- Geographical extent of the use of the mark in the Brazilian context
Also, once granted, a prefixed 10-year term of protection would be expected, extendable for equal and consecutive periods, upon analysis of new evidence of the maintenance of trademark distinctiveness in connection with its additional meaning.
The BPTO´s strategic plan in this specific regard was positively received. New spectrums of trademark protection are a very positive outcome for the modernization of Brazil´s Industrial Property System, opening possibilities for new uses of trademarks, benefiting titleholders, and improving the consumers perception of the marks.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
