The Recognition of Secondary Meaning in Brazil

05/08/25

On June 10, 2025, the Brazilian National Institute of Industrial Property (INPI) published INPI/PR Ordinance No. 15/2025, which adds Chapter XVI-A to INPI/PR Ordinance No. 08/2022.

This new regulation sets out rules for registering trademarks composed of signs or expressions that, at first glance, lack distinctive character — such as generic, necessary, common, vulgar, or merely descriptive terms (you can find more detailed information on this subject in our previous articles). Registration will be possible if the applicant can prove that such signs have acquired distinctiveness through consistent and recognized market use. This change represents a significant step in the recognition of the Secondary Meaning (or “acquired distinctiveness”) concept in the Brazilian trademark system.

What changes in practice?

Starting November 28, 2025, it will be possible to formally request the recognition of acquired distinctiveness. The applicant will need to demonstrate that, although initially non-distinctive, the sign has come to be recognized by the public as a trademark, thanks to consistent use in connection with a specific product or service.

When to request it?

This recognition can only be requested once from the INPI, upon payment of the applicable fee, in the following situations:

When the trademark application is filed;
Within 60 days after the publication of the application;
When appealing a refusal decision based on lack of distinctiveness;
When responding to an opposition or nullity proceeding challenging the mark on the same grounds.

Additionally, an exceptional 12-month period has been granted from the date the regulation enters into force to submit this request for ongoing cases or granted registrations under challenge due to lack of distinctiveness — offering a valuable opportunity to regularize these situations.

How to prove Secondary Meaning?

Although the regulation does not require specific documents, it establishes that the applicant must demonstrate:

That the trademark has been used continuously and significantly for at least three years prior to the request;
That a significant portion of consumers in Brazil associate that sign exclusively with the applicant’s brand.

Nationwide market research can be a useful tool in this evidentiary process.

Can the decision be appealed?

Yes. If the INPI denies the request for recognition of acquired distinctiveness, an administrative appeal may be filed within 60 days.