On May 30, 2023, the Brazilian Patent and Trademark Office (BPTO) granted the first registration for position trademarks in Brazil to Osklen but denied the trademark for Christian Louboutin’s red sole.
In the Industrial Property Gazette No. 2.734, dated on 30/05/2023, the grant of registration No. 830621660 was published. This registration pertains to the illustrated position trademark, which protects the classic ‘three holes’ design on the front of the renowned Osklen brand’s sneakers:
The protection extends to the use of three aligned and evenly spaced eyelets, with a distance of 0.5 cm between them.
Each individual eyelet has a diameter of 0.8 cm, and they are centrally positioned on the upper front part of the footwear.
The registration of position trademarks in Brazil was regulated by BPTO on September 21, 2021, through Administrative Rule No. 37 of 13/09/2021, which came into effect on October 1st of the same year. According to this rule, a distinctive combination capable of identifying products or services and distinguishing them from identical, similar, or related ones will be eligible for registration as a position trademark. The position trademark must be created by applying a sign in a unique and specific position on a specific support, and the application of the sign in that position must be dissociated from any technical or functional effect.
Conversely, in the same Industrial Property Gazette No. 2.734, dated 30/05/2023, the refusal of registration No. 901514225 was published for the position trademark pertaining to the famous red sole (Pantone No. 18.1663TP) applied to high-heeled shoes, reproduced below, from the French fashion brand CHRISTIAN LOUBOUTIN.
The refusal was based on the alleged lack of distinctiveness of the claimed position trademark, pursuant to articles 122 and 124, VIII, of the Intellectual Property Law in conjunction with the sole paragraph of article 84 of INPI/PR Administrative Rule No. 8/2022. There is still the possibility to appeal the decision.”
If you have any questions or would like to register a trademark of position in Brazil, please contact our international team at ricciinternational@riccipi.com.br. It will be a pleasure to assist you.
