Articles and Information

On 10 December 2024 the Brazilian Patent and Trademark Office (INPI) held a meeting with trademark owners and practitioners to discuss two relevant and controversial trademark matters: acquired distinctiveness (or secondary meaning) and online betting.

The goal of the meeting was to present INPI’s plans to change its analysis standards for trademarks falling within these categories, and to introduce the changes during 2025. This article deals with secondary meaning as presented by INPI.

INPI reckoned that, although acquired distinctiveness is not provided for in the Brazilian Trademark Law (Law No 9,279/1996), it is foreseen and provided for in the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights.

INPI also mentioned that court rulings rendered by Brazilian courts – either federal or state courts – had already recognised that many marks had acquired distinctiveness and deserved protection, even without a formal registration issued by INPI.

According to INPI, it is statutorily prohibited to register the following signs due to a lack of distinctiveness:

• letters;
• numbers;
• dates on their own;
• colours and their names;
• technical terms;
• product or packaging shapes when associated with a technical effect; and
• signs of a generic, necessary or common nature, or merely descriptive terms related to the products or services and signsindicating a feature of the products or services.

An opinion of INPI’s Attorney’s Office confirmed that signs that have acquired distinctiveness would be granted registration,provided that pertinent rules are set. In this context, INPI proposed specific rules for the prosecution of such applications:

• The applicant may submit documents supporting the sign’s acquired distinctiveness along with the filing petition or with aspecific petition within 60 days of the application’s date.
• Alternatively, if not filed along with the application, such documentation may be submitted along with an appeal against therejection of the application or with a specific petition within 60 days of the date of filing of the appeal.
• The applicant can request the examination of the acquired distinctiveness of its mark just once during the prosecution of theapplication. Any requests to examine a sign’s acquired distinctiveness submitted after the granting of the correspondingregistration will be dismissed by INPI.
• The documentation supporting the request must evidence (i) use of the sign as a mark without interruption during the fiveyears preceding the filing of the corresponding application; and (ii) that local consumers recognise the sign as a distinctivemark. A public poll is likely to be the best way to evidence that a sign has acquired distinctiveness through use in Brazil.

Further, INPI revealed its understanding that:

1. if identical signs are already being used in the market by different parties, this evidences that the sign cannot be registeredas a mark on an exclusive basis;
2. the evidence of acquired distinctiveness must apply to all items covered by the application;
3. the evidence must show use of the sign in the form in which it was applied for;
4. demonstrating acquired distinctiveness and demonstrating the notoriety of a mark are not the same;
5. token use of a sign is not valid evidence of its acquired distinctiveness; and
6. there are signs which are incapable of acquiring distinctiveness.

Surprisingly, INPI ended its presentation by stressing that, even if a sign has acquired distinctiveness and is registered as a mark, itsregistration will not prevent third parties from using it in its “common meaning”. It is hoped that use of a sign as a trademark bycompetitors will be blocked by its registration.

Originally published on WTR Daily on January 30, 2025.

Ricardo Pinho
Guerra IP – Partner