Update! Brazil’s Newly-Established Framework in Assessing Acquired Distinctiveness of Trade Marks

We previously covered on the Brazilian Patent and Trademark Office (“BPTO”) adopting changes to its practice in accepting acquired distinctiveness for trade mark registration – please see https://www.marks-clerk.com/insights/latest-insights/102kdtm-accepting-acquired-distinctiveness-for-trade-mark-registration-in-brazil/.

The BPTO has since published Ordinance INPI/PR No. 15/2025 on 10 June 2025, which establishes the official framework for assessing acquired distinctiveness. A copy of the Ordinance can be located at https://revistas-inpi-gov-br.translate.goog/pdf/Comunicados2840.pdf (in Portuguese language).

Essentially, a trade mark applicant filing a request to the BPTO on recognition of acquired distinctiveness must demonstrate that there is substantial and continuous use of the mark for the last 3 years and the mark is recognized by a relevant portion of the local consumer public to be exclusively associated with the applicant. 

Such a request may be filed together with payment of requisite official fees at one of the following stages:- 

• at the time of filing the trade mark application;
• within 60 days from date of publication of the trade mark application;
• when filing an administrative appeal against a decision to reject the trade mark application based on lack of inherent distinctiveness; or
• when filing a response to an opposition/ administrative nullity action of the trade mark application/ registration, based on lack of inherent distinctiveness. 

The Ordinance is due to come into force on 28 November 2025. There will also be a 12-month transitional period where trade mark applicants can file such requests for recognition of acquired distinctiveness for trade mark applications which are pending or registrations that are subject to administrative nullity proceedings for lack of inherent distinctiveness. Any decisions made by the BPTO on such requests can be subsequently challenged via administrative appeal.

This new framework established by the BPTO will be favourable to trade mark applicants looking to secure registration of marks which are not distinctive by nature, provided there is indeed sufficient evidence of prior use in order for the marks to acquire factual distinctiveness as a result.