Position Trademark: A New Form of Protection!

The Brazilian Industrial Property Law, Law No. 9,279 of May 14, 1996, provides that visually perceptible signs may be registered, thereby excluding a number of signs that are already eligible for protection in many countries, the so-called “non-conventional trademarks.”

Sound marks, scent marks, tactile marks, taste marks, motion marks (including holograms, gestures, and animated logos), position marks, and trade dress are examples of non-traditional trademarks that, although capable of distinguishing products or services and enabling consumers to identify them, do not fall within the categories currently recognized under Brazilian law and therefore do not meet the applicable legal requirements. In such cases, protection must generally be sought before the courts through unfair competition claims, an area that remains highly controversial and requires continuous development in judicial interpretation.

Market trends and the use of new media and technologies require the development of new ways to attract consumers’ attention, making signs increasingly distinctive. In this context, many companies have, for years, applied their trademarks or signs to specific positions on their products, allowing consumers to recognize the brand simply by visually identifying the sign in that particular position. One example is the red sole of Louboutin shoes, which, at the time it was introduced, was an unusual feature in the footwear market. In this example, although uncommon, the sign is visually perceptible, a requirement that could allow it to be registered in Brazil.

In order to provide better protection for certain innovative signs without amending the law, the Brazilian Patent and Trademark Office (INPI) has been seeking to introduce a new form of trademark representation in addition to the existing categories of: (i) figurative marks; (ii) word marks; (iii) composite marks; and (iv) three-dimensional marks. This new category is the “position mark.”

In its examination guidelines for this new form of representation, the INPI defines a position mark as one “formed by the application of a sign in a unique, specific, and invariable position on a given supporting object, resulting in a combination capable of identifying the commercial origin and distinguishing products or services from others that are identical, similar, or related.”

However, it should not be overlooked that the placement of many trademarks on products within the same market segment may not vary. In such cases, the position itself would not necessarily be distinctive in relation to competitors, which may generate considerable debate regarding registrability.

Nevertheless, New Balance obtained registration in Brazil after filing a lawsuit against the INPI—which had initially rejected the trademark application—specifically seeking protection for the position of the sign on the product.

It should be noted, however, that the position of the “N” trademark on the sneaker is widely used by manufacturers of products in the same market segment. Accordingly, would new position mark registrations for the products below be possible, or would competitors be prevented from using signs in a position that is already common in this market?

On April 13, 2021, the INPI published in the Federal Official Gazette the opening of a public consultation concerning the examination and registrability of “position marks,” making available for review the full drafts of: (i) a regulatory act governing the registrability of trademarks presented in the form of a “position mark”; and (ii) the examination guidelines for position mark applications.

See the Draft Regulatory Act here:https://www.gov.br/inpi/pt-br/servicos/marcas/arquivos/consulta_publica/MinutaPortariaMarcasdeposioConsultapblica.pdf

See the Draft Examination Guidelines here:https://www.gov.br/inpi/pt-br/servicos/marcas/arquivos/consulta_publica/MinutaNotaTcnicaCPAPDMarcasdeposioConsultapblica.pdf

The Brazilian Association of Industrial Property Agents (ABAPI), the Brazilian Intellectual Property Association (ABPI), the São Paulo Intellectual Property Association (ASPI), and the Inter-American Association of Intellectual Property (ASIPI), in a joint initiative, held three study sessions to evaluate and prepare comments on the wording of the draft documents.

The suggestions resulting from these meetings were to be submitted to the INPI in a formal document by June 12, in response to the Public Consultation.

It is expected that this new option will provide a solution for many specific cases. At the same time, considerable debate is also likely to arise once position marks become an established part of everyday trademark registration practice.