Brazil’s Patent and Trademark Office regulates secondary meaning recognition process

On June 10, 2025, Brazil’s Patent and Trademark Office (INPI) published Ordinance No. 15, establishing the requirements, deadlines, and procedures for recognizing trademarks’ secondary meanings. This ordinance defines the necessary criteria and outlines the steps involved, providing greater transparency and legal certainty.

What is secondary meaning?

The Brazilian Industrial Property Law, or LPI (Law No. 9,279/1996), provides that only distinctive, visually perceptible signs can be registered as trademarks (Article 129). The legislation expressly prohibits the registration of generic, necessary, common, vulgar, merely descriptive, or evocative signs linked to a product or service (Article 124, item VI).

However, in certain situations, a sign that (in principle) is considered insufficiently distinct for trademark registration may attain a distinctive character with ongoing, effective use over time. Eventually, the sign may end up being seen as an identifier of the origin of a product or service. This phenomenon – known as acquired distinctiveness or secondary meaning – is not expressly provided for in the Industrial Property Law, although it is recognized in prevailing legal scholarship and case law both in Brazil and abroad.

What changes with INPI Ordinance No. 15/2025?

The Ordinance defines the concept of secondary meaning and establishes a specific procedure to apply for recognition. The ordinance was issued in the wake of a public consultation allowing for improvements to the original text. The Ordinance allows the INPI to recognize the secondary meaning of signs originally devoid of distinctive character, enabling them to be registered as trademarks.

Procedure for recognizing secondary meaning

The Ordinance will become effective on November 28, 2025. As of this date, companies may apply to have the secondary meaning of their trademarks examined at the following times:

• Upon the filing ofthe trademark registration application;
• Within 60 days of the publication of the application by the INPI;
• In appealing against the INPI’s decision to reject an application for lack of distinctiveness;
• Via a statement during an administrative nullity action (processo administrativo de nulidade – PAN) or in opposition, arguing for a lack of distinctiveness.

The Ordinance also provides an exceptional 12-month period, starting from November 28, 2025, for companies to file secondary meaning requests for ongoing trademark applications, or for registered trademarks subject to an administrative nullity action based on alack of distinctiveness.

In all cases, it is necessary to provide documentary evidence of the continuous use of the trademark for at least three years, as well as evidence that a significant part of Brazilian consumers recognize the trademark associated products or services. The INPI will analyze the documents and may require further evidence or information, which must be provided within 60 days. An administrative appeal may be filed against a decision to recognize or reject a trademark’s secondary meaning.

So far, the INPI has yet to specify which documents will be sufficient for proving the consumer public recognizes the trademark, nor has it defined what this documentation should contain. This approach differs from the one provided in INPI Ordinance No. 8/2022 for the recognition of famous trademarks. In this instance, Ordinance No. 8/2022 provided detailed recommendations on documents and information capable of proving the requirement of ‘trademark recognition by a large portion of the general Brazilian public’ (Article 65, item I), such as market research, media planning, and media articles.

For more information on this topic, please contact Mattos Filho’s Technology practice area.

*With the collaboration of Emmanuele Nascimento Rosenhein.