The Brazilian Patent and Trademark Office (BPTO) [National Institute of Industrial Property] has authorised the registration of so-called “position marks”. Starting next month, shoe soles, trouser seams and other product features may be patented in the country, making copies difficult.

Position marks are in the category of “non-traditional marks” and are those that have an element that appears constantly on the product. They are very common in the fashion industry, such as the use of a letter in a specific place on a trainer or a colour on some finishing of the product.

There is a position mark when an element acquires “distinctiveness” among consumers, according to Kone Cesário, professor of intellectual property at Rio de Janeiro Federal University (UFRJ). “The whole world was already registering position marks,” she says. She recalls that, in the applications, companies need to prove that consumers recognise the element as part of the mark.

The authorisation for the registrations came with the publication, this week, of Ordinance no. 37, of 2021. The rule establishes that a position mark is deemed to be the application of a “distinctive sign in a unique and specific position on a given support, which is dissociated from a technical or functional effect”.

From October, to apply for a registration, it will be necessary to use the form relating to three-dimensional marks, but with the indication that it is a position mark, until the BPTO system makes its own form available. The substantive examination of all applications for registration of position marks will begin after the office’s systems have been necessarily adapted.

“Consumers end up learning that that sign applied in that way on a product is a trademark and they recognise the product”, says lawyer Rafaela Borges Carneiro, partner at the Dannemann Siemsen firm, who represents the shoe designer Christian Louboutin in Brazil.

In the world, the brand only failed to register its red soles in China and Brazil, where it has already filed an application. “I hope the BPTO speeds up this process for both pending marks and new applications. So that the assessment and registrations can be guaranteed as quickly as possible”, says Rafaela.

According to Luiz Edgard Montaury, a partner at Montaury Pimenta, Machado & Vieira de Mello and president of the Brazilian Intellectual Property Association (ABPI), even though the adaptations are yet to take place, the possibility of applying for registrations is already a great advance. “The BPTO needed to make this regulation because companies that violated position marks were alleging in court that position marks did not exist”, he says.