BPTO establishes framework for secondary meaning in Brazil: Ordinance no. 15/2025 regulates recognition of secondary meaning

The Brazilian Patent and Trademark Office (BPTO) published on June 10, 2025, the Ordinance INPI/PR No. 15/2025, which introduces the Chapter XVI-A into the Ordinance INPI/PR No. 08/2022. The new provisions govern the possibility of registering as trademarks signs or expressions initially deemed to lack distinctive character – that is, signs considered generic, necessary, common, vulgar or merely descriptive – provided that the applicant demonstrates that the sign has acquired distinctiveness (secondary meaning) through effective and continuous use in the market. This measure represents a significant development in the recognition of secondary meaning within the Brazilian trademark registration system.

WHAT CHANGES IN PRATICE?

As of the Ordinance’s effective date, November 28, 2025, trademark owners may submit a specific request to the BPTO for the recognition of acquired distinctiveness. To support such a request, the applicant must demonstrate that a sign originally considered non-registrable due to a lack of inherent distinctiveness has come to be perceived by the relevant public as a trademark as a result of consistent and exclusive use in connection with a specific product or service.

WHEN TO FILE THE REQUEST?

The recognition of the secondary meaning may be requested only once before the BPTO, upon payment of a specific fee, and at one of the following stages of the administrative process:

• At the time of filing the trademark application;
• Within 60 days from the date of publication of the application;
• In an appeal against a refusal based on lack of inherent distinctiveness;
• In a response to an opposition or administrative nullity action, when such measures are based on the alleged lack of distinctiveness.

Additionally, the Ordinance establishes a transitional period of 12 months, starting from its effective date, during which applicants may file requests for the recognition of secondary meaning concerning pending applications or granted registrations currently under challenge for lack of distinctiveness. This provision offers a valuable opportunity for portfolio regularization.

HOW TO PROVE SECONDARY MEANING?

The Ordinance does not establish a mandatory list of supporting documents, but the trademark owners must demonstrate:

• Substantial and continuous use of the mark for at least three years prior to the date of the request.
• That a relevant portion of the Brazilian consumer public recognizes the sign as a trademark exclusively associated with its holder.

Nationwide market research and consumer surveys may serve as valuable evidence to substantiate the acquired distinctiveness before the BPTO.

CAN THE DECISION BE CHALLENGED?

Decisions rendered by the BPTO regarding requests for recognition of acquired distinctiveness may be challenged through an administrative appeal, which must be filed within 60 days.

Our firm is closely monitoring the implementation of this new regulation and is available to assist with the assessment of specific cases, the preparation of supporting documentation, and the development of procedural strategies in light of the new provisions. Should you wish to discuss the potential impacts of this regulation on your trademark portfolio or clarify any specific questions, please do not hesitate to contact us at mail@kasznarleonardos.com.