Is Your Brand Too Common? Navigating Descriptiveness under LPI Art. 124, VI

One of the most frequent reasons the Brazilian National Institute of Industrial Property (INPI) refuses a trade mark application is that the sign is descriptive or generic in relation to the goods or services it covers. Under Article 124, item VI of Brazil’s Industrial Property Law (Lei da Propriedade Industrial — Law No. 9.279/1996, the “LPI”), signs of a generic, necessary, common, ordinary, or merely descriptive character cannot be registered as trade marks — unless they are presented in a sufficiently distinctive form. Understanding this provision is essential for any business choosing a brand for the Brazilian market.

The Legal Framework: Article 124, VI of the LPI

Article 124, VI prohibits the registration of any sign that is generic, necessary, common, ordinary (“vulgar”), or merely descriptive when considered in relation to the product or service it is intended to identify. The purpose of this prohibition is straightforward: terms that describe characteristics of goods or services must remain available to all traders in the market, and granting one party exclusive rights over such terms would be both unfair and damaging to competition.

The provision covers a range of scenarios, from obvious generic terms (like “Café” for coffee) to more nuanced descriptive terms that communicate a product’s quality, purpose, composition, or intended use (like “Ultra Forte” for adhesives). INPI examiners assess the mark from the perspective of the average Brazilian consumer, considering both Portuguese and any foreign-language terms that are widely understood in the relevant market.

Generic vs. Descriptive: Why the Distinction Matters

Although both fall under the same statutory provision, the practical consequences of a generic versus a descriptive classification differ significantly:

• Generic terms are the common name for the product or service itself — for example, “Computador” (Computer) for computers, or “Restaurante” for restaurant services. These are essentially impossible to register under any presentation.
• Descriptive terms describe a quality, characteristic, function, or intended purpose of the product — for example, “Limpeza Total” (Total Cleaning) for cleaning products. These may be registrable if combined with sufficiently distinctive graphic elements.

This distinction is critical because it determines whether the “figurative form” exception can save the application.

The Figurative Form Exception

Article 124, VI includes an important qualification: the prohibition does not apply when the sign is presented in a sufficiently distinctive form (“salvo quando revestidos de suficiente forma distintiva”). In practice, this means that a descriptive word can be registered as part of a composite mark (also called a “mixed mark” in Brazilian terminology) if it is accompanied by a distinctive logo, design, or stylised lettering that gives the overall mark a distinctive character.

For example, the word “Natural” alone could not be registered for food products. However, “Natural” combined with a highly distinctive graphic element — a unique illustration, an original colour scheme, and stylised typography — may be accepted as a composite mark. The key is that the graphic component must be strong enough to give the overall sign a distinctive identity beyond the descriptive word.

The Disclaimer: “No Exclusive Right”

When INPI accepts a composite mark that includes a descriptive word element, it typically applies a disclaimer (“apostila”), stating that the registration does not confer exclusive rights over the descriptive word element taken in isolation. The standard disclaimer formula reads: “sem direito ao uso exclusivo da expressão [word] isoladamente” (“no exclusive right to the use of the expression [word] separately”).

This means the trade mark owner can enforce rights over the mark as a whole — the combination of the word and the design — but cannot prevent other traders from using the descriptive word independently in its ordinary descriptive sense. The disclaimer is a standard feature in INPI practice for composite marks containing non-distinctive elements.

The 2025 Acquired Distinctiveness Reform

Historically, Brazil lacked a formal procedural pathway for claiming acquired distinctiveness (secondary meaning) for descriptive marks. That changed significantly in 2025. Through Portaria INPI/PR nº 15/2025, which came into force on November 28, 2025, INPI established a structured, evidence-based framework for recognising acquired distinctiveness. Under this new regime, applicants can now request that a descriptive or otherwise non-distinctive sign be accepted for registration on the basis that it has acquired distinctiveness through extensive use in the Brazilian market.

The evidence requirements are rigorous. Applicants must demonstrate, through consumer surveys, sales data, advertising investment, and other supporting materials, that the sign has become associated with a specific commercial source in the minds of Brazilian consumers. This reform brings Brazil into closer alignment with the practices of the EUIPO, USPTO, and other major offices.

Foreign-Language Descriptive Terms

A common misconception among foreign applicants is that a descriptive English-language term will be treated as distinctive in Brazil because it is not Portuguese. INPI does not automatically apply the doctrine of foreign equivalents, but it will refuse marks in foreign languages if the average Brazilian consumer would understand the term as descriptive. Words like “Fresh,” “Clean,” “Natural,” and “Fast” are widely understood in Brazil and are treated as descriptive when applied to relevant goods or services.

Conversely, a foreign-language term that is obscure or not commonly understood by Brazilian consumers may be treated as distinctive, even if it is descriptive in its language of origin. The assessment is always made from the perspective of the relevant Brazilian consuming public.

Strategic Recommendations

• Choose inherently distinctive marks: The most reliable strategy is to select coined, arbitrary, or suggestive marks that avoid the descriptiveness issue entirely.
• Invest in a strong logo if using descriptive elements: If the brand strategy requires a descriptive word, develop a distinctive graphic element that can carry the application through as a composite mark.
• Prepare for a disclaimer: If filing a composite mark with a descriptive word, expect the disclaimer. This is standard practice and does not prevent registration — it simply limits the scope of exclusivity.
• Consider the acquired distinctiveness route: For brands that have been extensively used in Brazil, the new 2025 framework offers a formal pathway to register descriptive marks on the basis of secondary meaning.
• Test foreign-language marks: Do not assume that an English or other foreign-language descriptive term will be accepted in Brazil. Evaluate whether the term is commonly understood by Brazilian consumers.

Common Mistakes

• Filing a word mark for a descriptive term: If the term is descriptive, a word-only (nominative) application will almost certainly be refused. File as a composite mark with a distinctive logo instead.
• Assuming a logo alone solves the problem: The graphic element must be genuinely distinctive. A simple geometric shape or a basic font treatment may not be enough to overcome the objection.
• Combining two descriptive words: Merging two descriptive terms (e.g., “Sabor Natural” / “Natural Flavour” for food) typically does not create distinctiveness unless the combination produces a surprising or non-obvious new meaning.
• Ignoring the disclaimer’s impact on enforcement: A registration with a disclaimer protects the mark as a whole, but enforcing rights against a party that uses only the descriptive word element will be extremely difficult.

Key Takeaway

Article 124, VI of the LPI reflects a fundamental principle of trade mark law: descriptive and generic terms belong to the public and cannot be monopolised by a single trader. However, the figurative form exception provides a practical solution for brands that incorporate descriptive elements — by pairing the descriptive word with a sufficiently distinctive logo, applicants can achieve registration, subject to a disclaimer on the non-distinctive word element. With the introduction of the acquired distinctiveness framework in 2025, Brazil now also offers a formal path for descriptive marks that have earned distinctiveness through extensive use. The key for applicants is to plan the filing strategy around these realities, choosing the right presentation format and building the evidence base needed to succeed.