Effects of the declaration of acquired distinctiveness

Abstract

The study examines the legal effects of the recognition of acquired distinctiveness — secondary meaning — on trademark registration in Brazilian law. It starts from the finding that, once the factual conditions of subsequent acquisition of distinctiveness are established, the administrative act that originally denied exclusivity is not void: what occurred was a supervening change in the substance of the right, not an error by the authority. It follows that the judicial declaration operates ex nunc and not ex tunc, and that the court must fix, on the evidence, the date from which the sign became distinctive. The text covers article 124, XXIII, of the 1996 Industrial Property Code, the Pouillet exception, the right of precedence in registration, the disclaimer entered in the register and the protection of unregistered trademarks, drawing on Brazilian and French scholarship and on decisions of the São Paulo and Paraná courts of appeal concerning ideological imitation and parasitic competition. It concludes that a de facto trademark, whether originally or subsequently distinctive, always falls under the protection of article 124, XXIII.