Broadly speaking, a trademark consists of a distinctive sign that serves to visually identify the origin and distinguish a product or service, differentiating a product or service from another equal or similar. In Brazil, its registration is incumbent on the National Institute of Industrial Property (INPI), and until 2021, only four types of trademark were subject to registration, namely: 1) nominative mark, consisting of only one or more words; 2) figurative mark, consisting of a drawing, image, figure and/or symbol, that is, a graphic representation without nominative elements; 3) mixed brand, composed of the combination of figurative and nominative elements, that is, both by words and by drawings, images and others, forming a graphic representation; and 4) three-dimensional mark, consisting of the distinctive plastic form of a product or service, generating an individuality in the market (eg, packaging of products with differentiating characteristics).
Only in September 2021, the INPI, through Ordinance n° 37, started to admit the registration of calls position marks.
The position mark, as defined by the INPI, is the application of a sign in support in a specific position that results in a distinctive set to identify a product or service. Such sign is not intended for technical or functional purposes, but only for purposes of distinctiveness, and must be positioned in a non-habitual way in the market. The sign applied to the object may consist of words, letters, digits, ideograms, symbols, drawings, images, figures, colors, patterns, shapes or the combination of these elements.
The admission of the position mark registration brought a great innovation in Brazil, considering a brand beyond the “traditional” types, demonstrating that INPI has been committed to following market trends.
Although the possibility of registering a position mark has existed since September 2021, the INPI granted the first registration of such a type of mark only in May 2023, following a request from the clothing and accessories company Osklen, which sought to protect, through the position mark, the three eyelets positioned on top of the tennis models produced by it.
The INPI understood that the eyelets define Osklen shoes and that, even being a common adornment in sneakers, the way in which they are specifically applied (sequence of three eyelets on the footwear) has been used only by Osklen, among the shoe manufacturers, which makes its products unique in the market, in order to characterize a sufficiently distinctive element to be considered as a brand.
With the granting of the registration of the position mark of the three eyelets, Osklen has exclusive use on this element, and may prevent third parties from using similar items in their products, which guarantees the company's position in the market and reaffirms the individuality and exclusivity of their shoes, a factor of extreme importance in the fashion segment.
On the other hand, contrary to the decision in favor of Osklen, the BPTO rejected the application for registration of a position mark of the renowned French brand Christian Louboutin, seeking to register the famous red soles characteristic of their high-heeled shoes.
Although the red sole is already notably associated with Louboutin, the INPI did not comply with the request because it believes that the red color applied to high-heeled shoes is not a sufficiently distinctive element, and therefore cannot give rise to the exclusivity of use and the granting of the registration of the position mark.
The case of Louboutin has not yet ended, because the company, disagreeing with the rejection, filed a nullity lawsuit against the decision of the INPI, alleging lack of foundation and that the red soles of the brand are already characteristic in the market and globally recognized.
The insertion of position marks in the modalities of registration of the INPI means both a demand from the market itself to protect this type of brand as well as an incentive for companies to also consider adding this element in the branding of their products and services, since it is now possible to guarantee the exclusivity of use of this type of brand.
Currently, in the INPI, more than 200 applications for registration of position marks from various market segments are underway, which demonstrates a great interest of companies in seeking the exclusivity of use of the distinctive elements of their products and services.
In fact, the registration of position marks is highly recommended in many cases in order to protect products and services that contain them. However, each case must be analyzed by experts in the subject in order to determine whether the existing elements meet the criteria and registration requirements of the BPTO.
