Acquired Distinctiveness Will Be Recognized by the Brazilian Patent and Trademark Office (BPTO) Starting November 28, 2025: A New Regulatory Framework for the Registration of Marks Lacking Inherent Distinctiveness
1. General Provisions
As a general rule, a trademark is a distinctive sign capable of identifying a single commercial source of goods or services.
However, a mark that is not inherently distinctive— due to its generic or descriptive nature — may acquire distinctiveness through continued and intensive commercial use, ultimately becoming associated with a specific source in the minds of consumers. This phenomenon is known as "secondary meaning" or "acquired distinctiveness."
This legal concept, already recognized and regulated in many countries, will now also be formally accepted by the INPI. Note that we have already reported on the intention of the BRPTO to implement the formal application of the "Secondary Meaning" Institute in the country back in 2023 (see article here). It is now a reality.
2. Background
Historically, the BRPTO has accepted the concept of secondary meaning only in exceptional cases, especially under the telle quelle principle provided in Article 6 quinquies of the Paris Convention, and only when the trademark was already registered abroad.
Due to the lack of formal regulation, trademark owners seeking recognition of acquired distinctiveness in Brazil were typically required to file lawsuits before the Federal Courts. In such cases, they had to submit strong evidence demonstrating the mark's intrinsic and extrinsic distinctiveness, including consumer surveys, sales volumes, advertising investments, among other market indicators.
3. BRPTO's Rules on Acquired Distinctiveness
With the publication of INPI/PR Ordinance No. 15/2025, which will enter into force on November 28, 2025, the BRPTO introduces significant regulatory development by establishing clear procedures, deadlines, and documentation requirements for the recognition of acquired distinctiveness in trademark examination. This new framework offers a defined administrative route for registering marks that lack inherent distinctiveness.
When Can the Request Be Filed?
The request for examination of acquired distinctiveness may only be submitted at the following procedural stages:
- At the time of filing the trademark application.
- Within 60 days of the application's publication, through an express and clear statement attached to the formal response.
- When filing an administrative appeal against a refusal based on lack of distinctiveness.
- When answering to an opposition or to a nullity action based on lack of distinctiveness.
It is important to note that this request may be submitted only once per administrative proceeding, under penalty of inadmissibility of subsequent requests.
Documentation Requirements
In addition to submitting the request, the applicant must file supporting documentation within 60 days of the request date. This documentation must demonstrate:
- Substantially continuous use of the mark during the three years preceding the request; and
- That a relevant portion of the Brazilian consumer public for the products or services in question recognizes the sign as a trademark exclusively associated with the applicant, capable of distinguishing the applicant's goods or services from those of other origins.
Although the BRPTO has not yet specified exactly which documents will be considered sufficient, based on prior internal discussions and international practice, the following types of evidence may be relevant in proving secondary meaning:
- Consumer perception surveys
- Sales volume of the marked product
- Duration of use of the trademark
- Intensity and consistency of use in the market
- Consumer testimonials or affidavits
- Statements from business or professional associations
- Marketing and advertising investments
- Media discourse analysis
- Geographic scope of use within the Brazilian market
During the examination, the BRPTO may issue office actions requiring supplementary information, to be submitted within 60 days. Any decision rejecting the claim of acquired distinctiveness shall be subject to appeal
Transitional Provision
With regards to pending trademark applications or registered trademarks challenged on the grounds of lack of distinctiveness, the Ordinance grants an extraordinary 12-month period, counted from its effective date, during which applicant/ owners may request the examination of acquired distinctiveness even outside the standard procedural windows. However, this extended period does not suspend the regular course of administrative proceedings.
Duration of Acquired Distinctiveness
The Ordinance does not set a specific validity term of acquired distinctiveness. For now, it will follow the same rules applicable to standard trademark registrations in Brazil — ten years, renewable indefinitely for equal periods.
4. Conclusion
The formal recognition of acquired distinctiveness by the BRPTO represents a significant step forward for Brazil's trademark system. It aligns the national regulatory framework with international standards and offers a new administrative avenue for the protection of signs that, although initially non-distinctive, have gained recognition through consistent and substantial use in the marketplace.
For businesses that rely on descriptive or generic marks that have acquired consumer recognition over time, this change provides a valuable opportunity to secure trademark protection without resorting to costly litigation.
As the effective date approaches, trademark owners and IP professionals are advised to carefully review their portfolios and begin preparing documentation to take advantage of this important regulatory improvement.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
