Moving Forward Towards The Formal Application Of The "Secondary Meaning" Institute By The Brazilian PTO

• Published date: 11 April 2023
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Venturini IP
• Author: Adriane Bonato

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...