The Brazilian Patent and Trademark Office (BPTO) has taken a significant step in modernizing trademark examination practices by opening a public consultation on acquired distinctiveness, also known as secondary meaning. This initiative reflects a growing commitment to clarity, predictability, and fairness in assessing trademarks that initially lack inherent distinctiveness but have gained recognition through use in the marketplace.
Historically, the BPTO restricted its assessment of trademarks to inherent distinctiveness, rejecting marks based on a limited interpretation of the law without considering their real-world use. This left brand owners unable to argue acquired distinctiveness in administrative proceedings, often forcing them to escalate cases to the judiciary. Brazilian courts, however, have long accepted secondary meaning as a valid argument and routinely review BPTO decisions in full, including the use-based context of the trademark. This discrepancy between administrative and judicial practices created inefficiencies and uncertainty for brand owners.
Recognizing the need for change, the BPTO has gradually shifted its perspective. In late 2022, the BPTO’s Trademark Director announced plans to regulate secondary meaning, citing internal studies that confirmed Brazilian laws and international treaties, such as the Paris Convention, allow for its recognition. The BPTO reduced its trademark backlog and began preparing the groundwork for this shift, including conducting a regulatory impact analysis and drafting new guidelines.
Now, with the release of its draft guidelines, the BPTO has invited stakeholders to participate in a public consultation open until January 29, 2025. This consultation marks a pivotal moment for the IP landscape in Brazil, providing an opportunity for businesses, practitioners, and other stakeholders to shape the rules governing acquired distinctiveness.
What the Draft Guidelines Propose
The BPTO’s draft guidelines introduce a framework for proving acquired distinctiveness during trademark examination. For the first time, applicants can present evidence of secondary meaning at two stages: during the initial application filing or when appealing a rejection based on non-distinctiveness.
Key requirements include:
- Substantial and Exclusive Use: Evidence of at least five years of uninterrupted use of the trademark in the Brazilian market.
- Consumer Recognition: Market surveys demonstrating that the public identifies the mark as a source identifier.
- Investment in Brand Building: Detailed records of advertising campaigns and expenditures, showing efforts to strengthen the trademark’s identity.
However, it’s important to emphasize that these evidentiary standards are part of a preliminary draft and are subject to debate during the public consultation. For instance, the requirement for at least five years of use, while aiming to ensure rigorous evaluation, could prove overly restrictive in practice, potentially making it difficult for brand owners to prove secondary meaning. Stakeholders are encouraged to use this consultation to propose adjustments and ensure the final rules strike the right balance between fairness and practicality.
Evidence must also meet other high standards. It must relate specifically to Brazilian consumers, cover multiple regions of the country, and correspond to exactly the same mark under examination. For example, acquired distinctiveness for a word mark must be demonstrated without relying on visual or composite elements that are not part of the application.
The Importance of the Public Consultation
The public consultation is a vital step in finalizing these changes. Stakeholders are encouraged to provide feedback on specific articles or sections of the draft guidelines. Contributions must be submitted via the BPTO’s official form and email address, adhering to strict guidelines for format and content.
This consultation reflects the BPTO’s commitment to transparency and inclusivity. By involving practitioners, businesses, and the broader community, the BPTO aims to create a robust framework that balances the interests of brand owners with the public’s need for clarity in the marketplace.
A New Era for Brazilian Trademark Law
The proposed changes mark a turning point for trademark law in Brazil. By allowing arguments for acquired distinctiveness during the administrative process, the BPTO aligns itself more closely with international practices and the standards upheld by Brazilian courts. This shift reduces the need for costly and time-consuming litigation, providing a more efficient pathway for protecting trademarks that have gained distinctiveness through use.
At the same time, the high evidentiary standards proposed by the BPTO ensure that the process remains rigorous and transparent. Nevertheless, the draft nature of these rules provides an opportunity to refine the requirements during the public consultation, ensuring they remain robust but achievable.
A Long-Awaited Resolution
The BPTO’s recognition of secondary meaning has been years in the making. Its historical reluctance to consider acquired distinctiveness stemmed from a controversial interpretation of Brazilian IP law and the Paris Convention. However, internal studies and shifting priorities have led to a more progressive approach. The current draft guidelines represent the culmination of these efforts, resolving a long-standing debate and bringing the BPTO’s practices in line with the judiciary and international norms.
For brand owners, these developments are a game-changer. They provide clarity, predictability, and a fairer process for securing trademark rights. For practitioners, the new framework highlights the importance of proactive trademark management, emphasizing the need for comprehensive evidence to support claims of acquired distinctiveness.
As the public consultation progresses, stakeholders have a unique opportunity to contribute to this landmark change in Brazilian IP law. The BPTO’s initiative not only modernizes its trademark system but also reinforces Brazil’s position to progress IP protection and adapt some of its previous examination practices.
Originally published at World Trademark Review