Published on June 10 ,2025, and due to come into force on November 28 ,2025, Ordinance No. 15/2025 regulates the ‘acquired distinctiveness’ of trademarks or ‘secondary meaning’, which until now was not provided for in the normative acts of the Brazilian Patent and Trademark Office (BPTO).
As a rule, in order to be eligible for registration, a trademark must be visually perceptible, identify a specific product and/or service, not be included in the legal prohibitions set forth in Article 124 of the Industrial Property Law (Law No. 9,279/1996) (LPI) and, especially, be sufficiently distinctive from existing trademarks, differentiating it from other competitors in the market.
Therefore, under the LPI, a trademark composed of nominative elements, images, and/or generic or descriptive forms of a particular product or service could not be registered or attributed to a single and exclusive owner, precisely because it lacked the sufficient distinctiveness required by law.
However, over the year, and in an increasingly competitive market, it was noted that some expressions initially considered generic, descriptive or evocative have acquired a certain prominence and notoriety, causing the public to recognize them as trademarks in their own right and no longer as the meaning initially perceived.
Expressions such as ‘A Casa do Pão de Queijo’ (The Cheese Bread House), ‘Atlético Mineiro’, ‘China in Box’ and ‘America Airlines’, for example, composed of expressions in common use and which at first would not have been eligible for registration, began to be considered as signs exclusively identifying their owners, products and services provided, and managed to obtain a strong identity in the market, with easy recognition and identification by the consumers.
This phenomenon, identified as acquired distinctiveness or “secondary meaning”, widely recognized and studied by intellectual property doctrine and judged by Brazilian Courts, but until now not expressly provided for in law and/or normative acts, led the BPTO to initiate a Public Consultation for interested parties to discuss the possibility of recognizing the acquired distinctiveness of a trademark during its registration process.
As a conclusion of such Public Consultation, and in view of the increased number of trademarks that could benefit from the distinctiveness acquired due to their continuous and repeated use, BPTO published Ordinance No. 15/2025, which defines the procedures, deadlines and documents necessary for trademark holders to submit a request for such declaration to the Institute.
Under the terms of Ordinance No. 15/2025, the request for examination of the acquired distinctiveness may be submitted under the following terms, with a clear and express statement from the trademark owner.
i. On the date of the trademark application;
ii. Within sixty (60) days from the date of publication of the trademark application;
iii. On the date of filing of an appeal against the rejection decision based on lack of distinctiveness;
iv. On the date of filing of an answer to the opposition based on lack of distinctiveness; or
v. On the date of filing of answer to the administrative nullity process based on lack of distinctiveness.
After submitting an application for recognition of acquired distinctiveness, the trademark owner must, within sixty (60) days, submit documentation proving the acquisition of distinctiveness by use. This documentation must demonstrate:
i. continuous use of the trademark for three years prior to the application date; and
ii. that a significant portion of the national consumers of products or services identified with the expression recognize the sign as a trademark, being able to differentiate it from any identical or similar trademark, even if from a different market segment.
Ordinance No. 15/2025 also provides for deadlines for the owner to clarify any requirements formulated by BPTO, submit additional evidence and submit any appeal against a decision that does not recognize the acquired distinctiveness claimed.
The publication of this Ordinance is another act by BPTO to modernize and improve trademark protection in Brazil, with a closer look at the reality of trademark owners and the Brazilian market.
The Intellectual Property team at Felsberg Advogados is available to answer any questions you may have on this matter.
