Broadly, a trademark consists of a distinctive sign that serves to visually identify the origin and distinguish a product or service, differentiating it from another identical or similar product or service. In Brazil, its registration is handled by the National Institute of Industrial Property (INPI), and until 2021, only four types of trademarks were eligible for registration, namely: 1)word 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 a combination of figurative and nominative elements, that is, both words and 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 individuality in the market (e.g., product packaging with differentiating characteristics).
Only in September 2021, INPI, through Ordinance No. 37, began to admit the registration of so-calledposition marks.
The placeholder mark, as defined by INPI, is the application of a sign on a support in a specific position that results in a distinctive set to identify a product or service. This sign is not intended for technical or functional purposes, but solely for distinctiveness, and should be positioned in an unconventional way in the market. The signal applied to the object may consist of words, letters, digits, ideograms, symbols, drawings, images, figures, colors, patterns, shapes, or a combination of these elements.
The admission of the registration of the position mark brought a great innovation to Brazil, by considering a mark 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 this type of mark only in May 2023, responding to 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 sneaker models it produces.
The INPI understood that the eyelets define Osklen's footwear and that, even though they are a common adornment on sneakers, the way in which they are specifically applied (sequence of three eyelets on the footwear) has been used only by Osklen, among footwear manufacturers, which makes its products unique in the market, so as to characterize a sufficiently distinctive element to be considered a trademark.
With the granting of the registration of the three eyelets position mark, Osklen now has exclusive use of this element, being able to 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 its footwear, an extremely important factor in the fashion segment.
On the other hand, contrary to the decision in favor of Osklen, the INPI rejected the application for registration of a position mark by the renowned French brand Christian Louboutin, when seeking to register the famous red sole characteristic of its high-heeled shoes.
Although the red sole is already notably associated with Louboutin, the INPI did not accept the request because it understood that the red color applied to high-heeled shoes is not a sufficiently distinctive element and therefore cannot give rise to exclusive use and the granting of registration of the position mark.
The Louboutin case is not over yet, as the company, disagreeing with the rejection, filed a nullity action against the INPI decision, alleging lack of foundation and that the brand's red soles are already characteristic in the market and recognized worldwide.
The inclusion of position marks in the INPI registration modalities represents both a demand from the market itself to protect this type of mark and also an incentive for companies to also consider adding this element to the branding of their products and services, since it is now possible to guarantee the exclusive use of this type of mark.
Currently, at INPI, there are more than 200 applications in progress for registration of positional trademarks from various market segments, which demonstrates a great interest from companies in seeking exclusive use of the distinctive elements of their products and services.
In fact, registering 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 field to determine whether the existing elements meet the registration criteria and requirements of INPI.
