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October 08, 2021

Brazil introduces the possibility of position trademarks

As of October 1, 2021, applications for position marks are accepted for filing with the Brazilian Patent and Trademark Office (BPTO) as per a newly introduced Ordinance, initially published in the Brazilian Official Gazette on September 21, 2021. The move comes following a consultation regarding position marks earlier this year.

Whilst position marks are generally accepted in many jurisdictions worldwide, such marks in Brazil were previously only able to obtain protection through the Brazilian Courts. As per the Ordinance, a position mark is now protectable through filing with the BPTO, with position marks joining alongside the other already recognized mark types, such as word, composite, figurative, and three-dimensional.

A position mark in Brazil is defined as a "distinctive set" which allows the products or services to which the mark relates to be distinguishable from similar or identical marks, so long as the sign is in a singular and specific position of a support, and it can be dissociated from a technical or functional effect on the product itself. Moreover, the corresponding Technical Note, which complements the Ordinance, sets forth that the assessment of a position mark relies upon the uniqueness of the position on the support, in so far as the position is not one traditionally used. Owing to their nature, position marks are typically used within the fashion sector, for example, marks on trainers and sneakers.

New position mark applications in Brazil are to be filed using the electronic forms for three-dimensional marks, indicating that they are of a position mark nature, as specific electronic forms for position mark applications are not yet available.

Furthermore, pending trademark applications may now be converted into position marks upon submission of a corresponding request with the BPTO. As such, pending applications qualified to be considered position marks may do so as long as this is done within 90 days from October 1, 2021. The examination of position marks is set to take place once the BPTO has implemented the relevant adaptations to the system.

The new possibility of registering a position mark in Brazil indicates a move toward a modernised trademark system by the BPTO, providing more defined IP rights for holders of this type of mark.

Author: Danielle Carvey