June 16, 2023
They aimed at the Louboutin sole, but hit the Osklen sneaker!
Jokes aside in the title, despite having discussed for years the possibility of registering or not the famous red sole of Louboutin shoes as a position mark, Brazilian Patent and Trademark Office (BPTO/INPI) has just registered the first position mark in Brazil after its regulation in 2021. In this regard, our Trademark attorney, Vivian de Melo Silveira, explains a little more about this groundbreaking registration!
“A position mark is formed by the application of a sign in a unique and specific position on a particular support, resulting in a distinctive combination capable of identifying products or services and distinguishing them from identical, similar, or related ones. That’s what Osklen, a Brazilian clothing brand, achieved with the three eyelets applied on the front upper part of their sneakers, something never seen in the market before”, Vivian explains.
Therefore, consumers, when seeing a pair of sneakers with this application on the front upper part, will immediately recognize those sneakers as being manufactured by Osklen. In fact, it took 13 years of waiting for Osklen to obtain its registration – which we hope will be the first of many. Currently, there are 215 requests for position mark registrations in BPTO’s database, aiming to identify a wide range of products and services. The oldest request dates back to 2006.
However, with the regulation of this matter in 2021 and the adaptation of BPTO’s database for the examination of this type of marks, along with the training of its examiners, we expect that requests will be analyzed much more easily and swiftly.
The regulation of this matter is important to determine the limits of the intended protection and the minimum rules to be applied by the examiners. In this regard, the Technical Note that regulates the issue establishes that the position of the eyelets is not traditionally used for the application of trademark signs.
It is worth noting that the applied sign can be composed of any visually perceptible elements, such as words, letters, numerals, ideograms, symbols, designs, images, figures, colors, patterns, and shapes, as long as they are not subject to legal prohibitions. Finally, the protection granted by the registration of a position mark refers to the combination formed by the application of the sign in the unique and specific position. Therefore, Osklen’s registration provides protection to the three eyelets applied in that specific position on the sneakers, and not to any other sign applied in that position or even to the sneakers themselves.
The registration of a position mark has the same validity as a regular trademark registration, that is, 10 years, renewable for additional 10-year periods. If you would like to learn more about the protection of position marks, our Trademark department is ready to assist you!
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