The protection of position trademarks in Brazil are available since October 1st, 2021, by means of INPI´s Ordinance No. 37/2021, which established the rules on registering position trademarks in Brazil.

Position marks are trademarks that are placed on or affixed to goods in a specific way. They are often used in the fashion sector, for example, to protect elements of decoration of shoes, eyeglasses frames and clothes.

According to the INPI´s ordinance, position marks eligible for registration are formed by:

“a distinctive set capable of identifying products or services and distinguishing them from others that are identical or similar, provided that:

I – it is formed by the application of a sign in a singular and specific position on a given support; and

II – the application of the sign in said position of the support can be dissociated from any technical or functional effect.”

When the position trademark protection came into force in Brazil in 2021, the Applicants were required to file their position trademark applications by using the 3D trademarks application form and indicating that the application was related to a position mark. As of November 16, 2022, this procedure has changed. The INPI made available a specific request form for position marks on the electronic filing system (e-INPI).

These measures will allow the INPI’s Trademarks Board of Registration to exam applications that have already been filed but were waiting for updates to the processing system, as provided in Section 95 of INPI’s Ordinance No. 08/2022. Additionally, according to the INPI´s Technical Note related to the examination on the merits of such trademarks, the more distinctive the concerned mark, the greater the distinctiveness of the position mark and, consequently, the greater its scope of protection. Hence, it will be interesting to verify the level of analysis that will be adopted by the INPI´s examiner to assess the particularity of the specific position and the distinctiveness of the intended position trademark as the examination of such trademark applications commence.

With the creation of the referred specific request form and the update of examination rules, as well as the INPI´s electronic system for receiving and processing the registration of position marks, the INPI completes the work of planning and implementing the necessary procedures for registering such type of trademark.

These are positive news for the modernization of the Brazilian Trademark System as the applicant of a position trademark application will have a wider range of protection of its trademarks and more legal certainty when enforcing its rights against alleged infringers. Indeed, before the recognition of the protection of position trademarks in Brazil, applicants would typically apply for a figurative trademark application to try to protect what in practice was a position trademark. With the protection of position trademarks in Brazil, we could expect that a few industries, such as the luxury goods and fashion sectors, would be inclined to create more innovative trademarks to bring an added value to their business and mainly to clients and customers by means of more sophisticated trademark protection strategies.