What does a Position Trademark protect?

The Brazilian trademark system accepts, since its inception, four different presentation of a trademark: word expressions, related to the written portion of a mark; device (logo), related to images, designs, shapes and different alphabets (other than Portuguese) associated to the mark; device + word (mixed), formed by a word and a logo, when both words and devices are employed distinctively; and tridimensional trademarks, related to the distinctive plastic form applied tothe goods/services.

However, the complex commercial and human interaction with goods/services and their respective trademarks give space to different types of protection – in the USA, for instance, sound marks are applicable; likewise, smells and scents are subject of trademark protection in Japan. 

Consequently, these interactions require different mark presentation options, that may not wholly fit within the aforementioned options of the Brazilian protection system.

Such is the case of the position trademarks, prominently present in the fashion industry, which, until then, would not count with protection in Brazil – at least, not through a proper procedure, with requirements and analysis specifically tailored to the particularities of this type of trademark.

To allow broader protection of trademark applications, the Brazilian Patent and Trademark Office (BPTO) began accepting position trademark requests in October 2021, following internal discussion of this new presentation type.

Simply put, BPTO defines position trademarks as “a distinctive sign in a singular and specific position of a determined support, unrelated to technical or functional properties”.

This definition comes from BPTO’s Ordinance nº 37/2021, which establishes basic concepts for position trademarks. From the aforementioned definition, we may extract two essential requirements for a Brazilian position trademark:

Nevertheless, the definition and requirements do not explain what a position trademark actually is. To remedy this situation, the Office also published a technical note, further detailing terms and requirements to process and examine the position trademark distinctiveness.

Our starting point is the definition of “position”, core to the discussed trademark presentation type.

The position must be:

1. singular, regarding the place where the sign is displayed, which should not be commonly used on similar goods/services; and 2. specific, regarding the proportionof the sign in relation to the support, i.e., how much space does the signoccupy on the support.

2. The sign may be “any visually perceptible element”, including, but not limited to, letters, shapes, drawing, etc., as long as these elements are able to guarantee distinctiveness to the position trademark, when applied to the support.

The support is characterized by a dotted-line drawing, which represents the good/service in which the sign is displayed. This support must allow clear identification of the position, proportion and disposition of the applied sign.

All the above-mentioned elements comprise the position trademark request, which leads to the question: what does a position trademark protect?

After all, a position trademark does not relate solely to its sign, position or support. It is, in fact, the inseparable result of the sum of all these elements, to protect a sign, displayed in a singular position, on a determined support.

New Balance sneakers, with the characteristic "N" (sign) displayed on the side of the footwear (support). 

Source: https://www.newbalance.com.br

In other words, if any of these elements is altered – in comparison to a previously registered position trademark – the result will not be recognizable as the same mark, and, therefore, this new disposition will not be protected.

The technical note also provides further explanation on the formal requirements for a position trademark request, notably:

Despite the several requirements, examinations and intricate details, the possibility of registering a position trademark is surely a great advance of the scope of trademark protection on Brazil.

The recent formalization of position trademarks – which are already vastly used on other countries – puts Brazil in the limelight as a safe destination for protection of other distinctive elements of innovative trademarks, which will surely increase the demand and exploration of such goods/services nationwide.

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