On 21 September, the Brazilian PTO published a new rule, providing for the registration of trademarks in the form of a position mark. This is good news, as it brings the country in line with other jurisdictions that already accept this type of registration (e.g. the EPO, Germany, Argentina and Canada).
This move is also an important in terms of the overall discussion on the protection of non-traditional trademarks (i.e. marks related to color, sound, motion, position, or a 3D view, etc.).
A position mark is one these so-called “non-traditional marks”, consisting of the specific way in which it is placed or affixed to a product (for example, the distinctive positioning of a word on a pair of shoes).
In April 2021, the Brazilian PTO had already launched a public consultation process on the examination of applications for position marks, aiming to make the examination procedure easier and more transparent.
Our firm’s research area, Daniel Lab, actively participated in this process, and provided various submissions and positions on behalf of our firm and clients.
Under the new Rule, a position mark is characterized by a distinctive set of factors capable of identifying products or services, including: (1) the use of the sign in a single and specific position on a given support; and (2) the use of the sign in that position can be dissociated from its technical or functional effect.
From 1 October, users are instructed to use the existing form referring to 3D marks, indicating that it is a request for registration of a position mark. Such application process will last until the Brazilian PTO makes a specific form available.
Previously filed applications that fit with the description of a positional mark will be given 90 days to make the necessary changes. The examination of the merits of all position mark registration applications will begin after the necessary adaptation in the Brazilian PTO’s systems.
If you have any questions about this matter or would like more information do not hesitate to get in touch with us here and schedule a call with one of our experts.