Trademarks: Acquired distinctiveness criterion or "secondary meaning" on the agenda at the INPI

A trademark, in its essence, is a visually perceptible distinctive sign whose primary function is to identify and differentiate products or services, associating them with a specific source or origin. This function aims to prevent brand confusion in the market, providing legal certainty for both consumers and rights holders.

However, in an increasingly competitive market, it is not enough for a trademark to merely identify a product or service. It is essential to stand out and be perceived as unique and distinct from other marks in the marketplace. This element of distinctiveness is crucial not only for a brand's success, but also for securing legal protection through registration with the Brazilian National Institute of Industrial Property (INPI), as the lack of distinctiveness is considered an absolute bar to registration.

An important exception to the distinctiveness rule occurs when a trademark initially deemed generic, descriptive, or evocative of the product or service it represents acquires notoriety and, through continuous and established use in the market, becomes eligible for trademark protection. This phenomenon is known as acquired distinctiveness or "secondary meaning," and in Brazil, it is widely recognized by legal doctrine and the courts, although it was not previously applied by the INPI during its trademark examination process.

In the context of acquired distinctiveness, what matters is public perception. If consumers associate a mark with a specific product or service, distinctiveness is recognized, regardless of whether the mark consists of generic or common terms. In other words, a mark gains distinctiveness when its secondary meaning prevails over its primary meaning, becoming recognized and exclusive in the eyes of consumers.

Examples of trademarks that acquired distinctiveness include "A Casa do Pão de Queijo," "American Airlines," "Atlético Mineiro," and "China in Box." Although these marks were initially considered generic or descriptive and therefore unregistrable, continuous and recognized use in the market enabled their protection via registration due to their exclusive association with specific products or services.

This relevant approach, previously unacknowledged by the INPI when examining trademark applications, was finally placed on the Institute’s agenda. On October 29, 2024, through Industrial Property Journal (RPI) No. 2808, the INPI published a Public Consultation regarding the assessment of acquired distinctiveness through use during the examination of trademark registrability. This consultation aimed to gather feedback from stakeholders, fostering a broader debate on the topic and promoting greater clarity and consistency in trademark registration proceedings.

Stakeholders had until January 29, 2025, to submit their suggestions via a dedicated form provided by the INPI at consultapublicamarcas@inpi.gov.br. This process not only represented an opportunity to refine regulations on acquired distinctiveness, but also sought to ensure greater transparency, predictability, and public participation in the Institute's decision-making.

Under this important regulation, initially non-distinctive trademarks will become eligible for protection through registration, provided that continuous and substantially exclusive use is proven, leading consumers to identify the mark as belonging to a single owner. This represents a significant breakthrough, particularly for businesses that, despite having initially generic or descriptive trademarks, managed to establish a strong identity in the market and achieve widespread recognition among consumers.

In summary, the analysis and regulation of acquired distinctiveness by the INPI mark a major milestone in the field of intellectual property, providing a pathway to protection for trademarks that have become distinctive through effective and established market use.