By Natalie Benayoun, 3L
On September 21, 2021, the Brazil National Institute of Industrial Property (INPI) published a new rule allowing brands to register position trademarks. The Brazilian Patent and Trademark Office (BPTO) began accepting applications for this new type of filing on October 1, 2021. Brazil’s decision to allow the registrability of position trademarks affords brands an additional layer of protection and creates more defined intellectual property rights. Brands have wasted no time; Kipling filed the first position mark application in Brazil on October 1.
Brazil’s decision is on track with a more modernized trademark system. The registrability of position trademarks is still a new concept and many countries, including the United States, have yet to grant position trademarks. However, Brazil is not the first jurisdiction to make the move. In 2017, the European Union Intellectual Property Office (EUIPO) allowed protection for position trademarks. According to EUIPO, a position trademark consists of the specific way in which the mark is placed or affixed to the product. The mark must be distinct as a whole, therefore both the actual mark and its position on the product must be distinguishable among other marks. Additionally, the position of the mark may not have a functional effect. Similarly, according to the BPTO, position marks can be affixed physically, digitally, or virtually, so long as they follow a specific position pattern, occupy a singular position, and are distinctive as a whole.
Position trademarks are most prominent in the fashion industry to protect elements of decoration. A well-known example is the red sole on a Christian Louboutin shoe—the sole is a distinct red defined by the Pantone color code and, according to the European Court, “the color red applied on the sole of a woman’s heigh heel shoe is a position mark.” Thus, the mark is protectable as a position mark in Europe because the red sole of the heel signals to the public that the source is Christian Louboutin.
Before the BPTO expanded registrability to include position trademarks, trademark applicants in Brazil could only register four types of marks: word marks; figurative marks; composite marks; and three-dimensional marks. Thus, brands seeking to register position trademarks registered them as three-dimensional or figurative marks instead. Protection for position marks was acknowledged by the Brazilian courts despite not having their own category for registrability. For example, in 1991 the BPTO denied New Balance the right to use its letter “N” as a position mark on their sneakers. The Brazilian court, however, granted New Balance the right to protect the “N” on the center of the shoe, which signals to consumers that the source is New Balance. There, the court acknowledged the protection of the position of the “N”, but because marks were not previously registerable as position marks, New Balance registered the mark as a figurative mark. As for Louboutin, the BPTO has yet to grant its figurative mark application for the red sole from 2012. Only time will tell if the BPTO follows the European Court’s lead.
