BPTO Publishes Ordinance No. 15/2025 on Acquired Distinctiveness in Trademark Matters

BPTO Publishes Ordinance No. 15/2025 on Acquired Distinctiveness in Trademark Matters

On June 10, 2025, the Brazilian Patent and Trademark Office (BPTO) published in the Industrial Property Gazette (RPI), Ordinance No. 15/2025, which, through the inclusion of Chapter XVI-A in Ordinance No. 08/2022, regulates the institute of acquired distinctiveness in trademark matters. This publication represents a significant advancement in ensuring greater legal certainty and transparency within the Brazilian trademark system, as it defines this mechanism and establishes detailed criteria, procedures, and deadlines for its recognition.

According to the new text, inherent distinctiveness is the signal’s own capacity to identify the origin of goods or services and distinguish them from others. Acquired distinctiveness, on the other hand, corresponds to the phenomenon whereby a sign, initially lacking inherent distinctiveness, may be registered if it is proven that, through effective and continuous use in the market, it has acquired sufficient distinctiveness to be recognized by the relevant public as capable of identifying the origin of the goods or services and differentiating them.

Thus, the regulation provides that proof of acquired distinctiveness through use may overcome the prohibitions set forth in Arts. 122 and 124, paragraphs II, VI, VII, VIII, XVIII, and XXI, of Law No. 9,279/1996. Therefore, signs that originally did not meet the distinctiveness requirement may be registered as trademarks, provided it is demonstrated that they acquired such capability through continuous use and recognition by the relevant consumer public.

After defining the types of distinctiveness and indicating the cases where legal prohibitions may be set aside, the regulation specifies the procedural moments in which the request for examination of acquired distinctiveness may be submitted: at the time of filing the application; within 60 days after its publication; upon appeal against a refusal decision; during opposition proceedings; or in submissions in administrative nullity proceedings. It is important to highlight that the request may be made only once per administrative proceeding.

Additionally, the applicant must submit, within 60 days after the request, documents proving the substantially continuous use of the mark during the previous three years, as well as its recognition by the Brazilian consumer public. During the examination, BPTO may request complementary information, which must be provided within 60 days.

Finally, the regulation provides for an exceptional 12-month period, counted from the date of entry into force of the Ordinance, during which applicants with pending applications or registrations already questioned for lack of distinctiveness may request the examination of acquired distinctiveness, even outside the ordinary cases provided for this type of request. This period, however, does not interrupt the regular course of the process. The Ordinance will enter into force on November 28, 2025.

Ordinance No. 15/2025 is available at the following link: Ordinance No. 15/2025

Note: For quick release, this English version is provided by automated translation without human review.