Articles and Information

On June 6, 2025, the INPI published Ordinance No. 15/2025, governing the procedure for requesting recognition for trademarks that have acquired distinctiveness through use (“secondary meaning”).

According to the definition adopted by the INPI, trademarks with acquired distinctiveness are those formed by elements without inherent distinctiveness, which acquired distinctiveness through effective and prolonged use in the market, being recognized by consumers as identifying given products and services.

Owners of trademarks that would originally be considered lacking inherent distinctiveness and would be rejected by force of the provisions of items II, VI, VII, VIII and XXI of Article 124 of the Trademark Law, (which consider that letters, numbers and dates; generic terms and signs, commonly used in the market or merely descriptive; advertising signs and expressions; colors and their names; and common or necessary shapes of products or their packaging), may now prove their acquired distinctiveness.

Evidence that will be accepted by the INPI to prove this condition will be that which (i) proves the continuous use of the trademark in the market for a minimum period of three (3) years; and (ii) demonstrates the recognition by the respective consumer public of the trademark, as identifying given products or services and their origin. As for item (i), there is no specification of the market of the evidence, whether national or international and therefore evidence in either of them should be accepted. As for item (ii), evidence must refer to the Brazilian market and consumers. The INPI would likely accept documentary evidence, in the form of Affidavits with supporting documentation, for item (i), while for item (ii) a market survey seems to be the most appropriate evidence. Evidence must be in Portuguese.

The request for recognition of acquired distinctiveness may be filed only once, in relation to a trademark application or registration. This means that there may be more than one application for the same trademark, provided that it is the subject of different trademark applications or registrations applications; however, subsequent requests filed in the same trademark application or registration will not be accepted by the INPI.

The request may be made (i) when filing the respective trademark application; (ii) up to sixty days after publication of the application in the official bulletin; (iii) in an appeal against rejection of the application; (iv) in an answer to an opposition; and (v) in an answer to an administrative nullity action of a granted registration. The request may not be made after the respective phase has been completed. For example, a request may not be filed as an addendum to the filing, nor as an addendum to an answer to the opposition already submitted.

Exceptionally for trademark applications being prosecuted and for registrations under administrative nullity action arguing lack of distinctiveness of the respective mark on the date the resolution enters into effect, November 25, 2025, there will be a period of a year from this date, for the interested parties to request recognition of acquired distinctiveness of their marks.

Interestingly, evidence of acquired distinctiveness must be submitted within 60 days of the date of its request. In the event that the request was presented through an appeal against the rejection or an answer in an administrative nullity action, evidence may be submitted within 60 days after the INPI issues a decision confirming that the mark lacks distinctiveness. Such evidence may also be supplemented within 60 days of its submission.

The INPI will examine the evidence and will decide on the request, and may issue office actions, which will have to be answered within 60 days of their publication. In case the request is denied, an appeal against this decision may be filed within 60 days of its publication, and the appeal’s decision will be final.

We anticipate that, except for the trademarks that the INPI used to consider as advertising signs or expressions, there will be a lot of controversy regarding the recognition of the acquired distinctiveness of trademarks formed by the other elements mentioned in the law, especially when such elements are being used by several competitors in the market. In our opinion, the INPI should have provided for the opportunity for third parties to challenge the request, which may only be possible in cases where the request is included in the trademark application. Therefore, owners of the referred-to trademarks must strategically analyze the best time to submit the request for recognition of their acquired distinctiveness, in order to avoid having it challenged by third parties.

Originally published on WTR Daily on July 11, 2025.

Ricardo Pinho
Guerra IP – Partner