Secondary Meaning In Brazil: Effective Recognition Under A Consolidated Set Of Rules

Following up our last article published on 23 July 2025 (https://www.mondaq.com/brazil/trademark/1647694/brazil-introduces-new-rules-on-acquired-distinctiveness-in-trademark-registration), the present article has the objective of updating the subject on the effective recognition of the Secondary Meaning in Brazil, which set of rules entered into force on November 28, 2025, with practical implementation by the Brazilian Patent and Trademark Office (BRPTO) on December 20, 2025.

1. Preliminary remarks

As a general rule, a trademark must be distinctive and capable of identifying a single commercial source of goods or services. Distinctiveness is, therefore, a core requirement for trademark registrability under Brazilian law.

That said, not all signs are inherently distinctive. Marks of a generic, descriptive, or merely suggestive nature may, over time, acquire distinctiveness through consistent and intensive use in the marketplace. When this happens, consumers begin to associate the sign with one specific commercial origin. This phenomenon is commonly referred to as "Secondary Meaning", or "Acquired Distinctiveness".

In practical terms, the sign goes beyond its original, descriptive meaning and starts to perform a genuine trademark function. It is no longer perceived merely as a description of the product or service, but as an indicator of origin.

2. Historically: Restricted Acceptance and Judicialization

For many years, the concept of secondary meaning was accepted by BRPTO only in a very limited manner. In practice, it was treated as an exception under Article 6quinquies of the Paris Convention — the so-called telle quelle principle — and generally applied only to trademarks that had already been registered abroad.

In the absence of clear administrative regulation, trademark owners seeking protection for signs with acquired distinctiveness were usually left with no alternative but to file lawsuits before the Brazilian Federal Courts. In those cases, rights holders were required to present extensive evidence of use and recognition, including consumer surveys, sales figures, advertising investments and market presence.

From a practitioner's perspective, this scenario generated considerable legal uncertainty. Even marks with long-standing and well-established market presence were frequently refused at the administrative level, forcing owners to rely on judicial intervention to secure protection for descriptive, evocative or otherwise weak signs.

3. A Paradigm Shift: Regulatory Recognition and Effective Implementation

This landscape changed in a meaningful way with the enactment of BRPTO's Ordinance No. 15/2025, which entered into force on November 28, 2025, with practical implementation beginning on December 20, 2025.

From that point onward, secondary meaning became structurally incorporated into the BRPTO's trademark examination practice. For the first time, the recognition of acquired distinctiveness became subject to clear procedural rules, objective technical criteria and specific transitional provisions.

This regulatory milestone marks the effective incorporation of secondary meaning into the Brazilian trademark system at the administrative level.

4. Administrative Procedure under the Trademark Guidelines

Under the current framework, the recognition of secondary meaning follows a specific administrative procedure, as detailed in the INPI Trademark Guidelines. For trademark owners, this requires careful strategic planning, as the institute is not examined ex officio.

4.1. Procedural Opportunities to request the recognition of Secondary Meaning

The request for recognition of acquired distinctiveness must be expressly made by the applicant and may only be submitted at specific procedural stages, namely:

• on the filing date of the trademark application;
• within 60 days from the publication of the application;
• in appeal against a refusal based on lack of inherent distinctiveness;
• in response to an opposition grounded on lack of distinctiveness; or
• in counterarguments of an administrative nullity proceeding based on lack of distinctiveness.

It is noteworthy that regulations limit the allegation of secondary meaning to one single opportunity per administrative proceeding. Any attempt to raise the argument outside these situations, or more than once, will not be examined. This reinforces the exceptional nature of the institute.

4.2. Evidence and Standards of Proof

Evidence submitted to the INPI must demonstrate that the sign has effectively overcome its primary meaning and is perceived by consumers as identifying the commercial origin of the relevant goods or services.

To that end, the applicant must file a specific petition for the submission of evidence of secondary meaning, demonstrating, cumulatively:

• substantially continuous use of the mark during the three years immediately preceding the request; and
• recognition by a relevant portion of the Brazilian consuming public that the sign functions as a source identifier.

It is important to bear in mind that the BRPTO gives particular importance to consumer perception surveys, which are considered the most reliable means of demonstrating a change in public understanding. Statements from third parties maintaining a commercial relationship with the applicant, when submitted in isolation, are not deemed sufficient.

Additional evidence — such as sales volumes, advertising investments, duration of use and geographic scope — may also be relevant, provided that a clear link is established between such data and consumer perception.

The evidence must demonstrate nationwide recognition. Regional data, foreign materials or digital metrics that do not clearly identify the Brazilian public are generally considered insufficient.

4.3 Scope of Recognition

Recognition of acquired distinctiveness must relate to the mark exactly as filed. Evidence referring to different visual or graphic presentations is not accepted where such elements may influence consumer perception. Accordingly, word marks must be proven solely in their word form (only name).

Moreover, recognition will be limited to the goods or services effectively supported by evidence. Where the proof demonstrates recognition only for part of the specification, the BRPTO may restrict the scope of protection accordingly.

4.4. Practical Limits to the Application of the Institute

Despite the regulatory advances, certain limitations remain relevant. The coexistence of multiple third-party registrations containing the same sign within the same market segment—commonly referred to as a diluted or worn-out sign—undermines the identification of a single commercial source and precludes the recognition of acquired distinctiveness.

5. Final Remarks

The evolution of the "Secondary Meaning" Institute in Brazil reflects a clear shift with regards to this specific subject. What was once a restrictive and largely judicialized concept has now become an institute effectively integrated into administrative trademark examination.

With the entry into force of BRPTO's Ordinance No. 15/2025 and its practical implementation in December 2025, the BRPTO has provided greater predictability, reduced legal uncertainty and aligned Brazilian trademark practice with international standards — without sacrificing the technical rigor necessary to preserve free competition and the essential source-identifying function of trademarks.