On September 21, 2021, the Brazilian Patent and Trademark Office (“BPTO”) published Ordinance No. 37/2021 which provides for the registrability of position marks.
The act establishes that this new form of protection is “formed by the application of a sign in a singular, specific and invariable position of a given support object, resulting in a set that is able to identify the business origin and distinguishes products or services from identical or similar ones”.
As a result, position marks can be identified when the consumer is able to recognize a mark only by visual identification of the sign in a certain position of the product or service.
Thus, to be considered a position mark, the sign must meet certain requirements, namely: (i) the particular and distinctive position of a distinctive sign in a fixed and permanent way; (ii) the position of the distinctive sign on the product must not be in widespread use in the market/segment; (iii) the distinctiveness of the set formed, must be able to individualize the product in question in the market; and (v) the ability to be recognized as a brand by the consumer.
Some examples of sets considered position marks are the red sole of Louboutin shoes and Levis’ pants pockets, both formed by distinctive signs, having no functionality but applied in a certain position on the products, which allows the immediate association by the consumer with such companies.
Demarest’s Intellectual Property and Innovation team is available to advise you on this topic.