After extensive studies and a public consultation, the BPTO – Brazilian Patent and Trademark Office recently published Ordinance No. 37/ 2021 and Technical Note No. 2/2021, which introduce, in Brazil, the registrability of position marks. This Ordinance comes at a good time, in order to bring our trademark regulation closer to the standards in force abroad. The affixing of the manufacturer's distinctive sign, in a specific position on the product, may be an individualizing characteristic that will now be protected through trademark registration. Actually, even before this Ordinance, manufacturers using position marks could already act against the imitation of offenders, but they had to avail themselves of the less effective protection that is available through the rules that repress unfair competition, and protect "trade dress”, or external appearance of the products.
According to Article 1 of the Ordinance, “the set capable of identifying goods or services and distinguishing them from identical, similar or akin goods or services shall be registered as a position mark”. For this type of trademark to be accepted by the BPTO, the distinctive set must be formed by applying a sign “in a singular and specific position of a given support”. In other words, the BPTO will not accept signs applied in places considered to be of common use for a given support. Furthermore, the affixation of the sign in the specific position must be dissociated from technical or functional effects. Thus, if that position of the sign on the support does not have the sole function of identifying the origin of the products or services covered by the application, but has a technical function or a functional utility, the BPTO will not accept the registration of that mark as a position mark.
Despite this new and relevant development, it is equally noticed that the new rules create restrictions to the registration of position marks, by demanding that the position of the sign be “singular and specific”; after all, for some products there aren't many possible variations regarding the position in which a brand can be placed. The BPTO Technical Note brings several examples of position marks that are not accepted for registration, already conveying to users that such marks will only be accepted for registration when they meet all the various requirements that were listed.
In a transitory rule, the BPTO will allow the holder of an application for registration of a trademark that is still pending to fall under the definition of position mark, provided that it has been filed by October 1, 2021. In this case, the applicant must request by December 30, 2021 to change the form of presentation of his trademark to a position mark.
Our office is able to assist you in obtaining position mark protection. In case of interest, please contact the professional who usually assists you, or write to firstname.lastname@example.org