Accepting Acquired Distinctiveness for Trade Mark Registration in Brazil

It is generally the case that a trade mark should be intrinsically distinctive before it can be registered. That said, in some countries, a trade mark which is not distinctive by nature may still be registered if it has acquired distinctiveness as a result of prior use. 

For instance, in Singapore, section 7(2) of the Trade Marks Act provides that a trade mark must not be refused registration by virtue of it lacking distinctiveness or being descriptive of the goods and/or services applied for, if it has in fact acquired a distinctive character as a result of the use made of it. Ideally, the evidence should relate to at least 5 years of use prior to the date of application for registration of the trade mark.

In Brazil, the Brazilian Patent and Trademark Office (“BPTO”) (also known as Instituto Nacional da Propriedade Industrial) which oversees the registration and protection of IP rights, recently established new rules where trade marks which acquired distinctiveness as a result of prior use, may be registered. Prior to this, assessment on trade mark registrability based on such grounds is restricted. Any trade mark applicants receiving unfavourable outcomes from the Registry would then need to appeal to Brazilian courts, which were more inclined to accept evidence of prior use, in determining if a trade mark has acquired distinctiveness and can be registered.  

A public consultation was conducted last year, where the BPTO’s draft guidelines on this issue proposed that trade mark applicants are to file supporting documents exhibiting evidence of prior use during the initial filing stage or when appealing against a refusal objecting that the trade mark lacks distinctiveness. Additionally, even if a trade mark is successfully registered as a result of acquired distinctiveness, the trade mark applicant cannot prevent a third party from using the same term in its “common meaning”. 

On 9 May 2025, the BPTO introduced a new schedule under Ordinance INPI/PR No. 10/2025, detailing the latest official fees payable for IP registration, including for trade marks. A copy of this document can be downloaded at https://revistas.inpi.gov.br/pdf/Comunicados2836.pdf (in Portuguese language). Of note, item 3021 provides the official fees payable for submission of documents to prove acquired distinctiveness of trade marks. The new schedule has yet to take effect, but the eventual changes to the BPTO’s practice in accepting acquired distinctiveness for trade mark registration are highly anticipated.