Brazilian IPO intends to include an examination process for recognition of acquired distinctiveness (secondary meaning)
12 May 2023 | Newsletter
The Brazilian Industrial Property Office (“INPI”) has recently published its Strategic Planning which includes nine projects and milestones for the next four years. By thinking of new ways to optimize the quality and speed in granting and registering industrial property rights, the INPI intends to include an examination process to recognize acquired distinctiveness (secondary meaning).
The process of secondary meaning – which sets conditions for the registration of trademarks that have become sufficiently distinctive by their use – has been widely discussed in Brazil. As there is no specific provision in Law no. 9.609/1996 (“Brazilian Industrial Property Law” or “LPI”) for the recognition of acquired distinctiveness, the INPI decision is a landmark since the government has never formally acknowledged this form of trademark protection before.
Historically, the INPI’s position was that the application of secondary meaning should be restricted to countries that adopt the declaratory system of trademark protection, as opposed to Brazil, which adopts the attributive system of rights. Thus, over the past years, the recognition of secondary meaning was mostly limited to the judicial proceedings brought before Brazilian courts on the matter and to the cases in which the principle telle quelle would apply, by article 6 quinquies, A-1, of the Paris Convention for the Protection of Industrial Property (“CUP”), and/or by application of article 6 quinquies, C-1 of CUP and 15.1 of the Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), in order to take into consideration the length of time the mark has been in use to for trademark protection.
The publication of INPI’s Strategic Planning also fuels the debate on the requirements to recognize the secondary meaning of trademarks in Brazil. It is important to note that there are some criteria usually considered to assess whether an initially non-distinctive trademark, can acquire distinctiveness through its use. For example, secondary meaning can be measured by deliberating on (i) how long the trademark has been used in the market, (ii) the quantity of advertising imprinted on the promotion of the trademark, (iii) the geographical reach of the trademark, and (iv) consumer surveys.
In this regard, there is already some discussion as to whether it would be possible to present proof of acquired distinctiveness of a trademark, such as the ones mentioned above, at the time of applying for its registration. Article 155, sole paragraph, of the LPI, opens the possibility of presenting in the application for registration of a trademark any document that is of interest to the applicant, without any restriction. Thus, supposedly, there is room to instruct the filing with any document that the applicant believes to demonstrate that the trademark application deserves the registration sought, including documents to demonstrate its acquired distinctiveness.
Although it is not possible to predict the criteria that will be adopted by the INPI for this purpose, the implementation of a technical exam for recognition of secondary meaning in Brazil is an advance and, without a doubt, will contribute to innovation in the country and with the harmonization of the trademark protection regime worldwide. Therefore, it remains to be seen how these discussions will unfold for the benefit of trademark applicants in the next few years.