In a broad way, a brand consists of a distinctive sign that serves to visually identify the origin and distinguish a product or service, differentiating one product or service from another identical or similar. In Brazil, your registration is the responsibility of the National Institute of Industrial Property (INPI), given that, until 2021, only four types of trademarks were eligible for registration, which are: 1)word mark, consisting of only one or more words; 2) figurative mark, consisting of drawing, image, figura e/ou símbolo, that is, of a graphic representation without nominative elements; 3) mixed brand, composed of the combination of figurative and nominative elements, that is, both in words and in drawings, images and others, forming a graphical representation; and 4three-dimensional mark, constituted by the distinctive plastic form of a product or service, generating an individuality in the market. ex., product packaging with distinguishing characteristics
Only in September 2021, the INPI, through Ordinance No. 37, started to allow the recording of callsposition marks.
The placeholder, according to the definition provided by INPI, it is the application of a sign on a support in a specific position that results in a distinctive set to identify a product or service. Such signal is not intended for technical or functional purposes, but only for the purpose of distinctiveness, should be positioned in an unusual way in the market. The signal applied to the object can consist of words, letters, digits, ideograms, symbols, drawings, images, figures, colors, patterns, shapes or the combination of these elements
The admission of the position mark registration brought a great innovation in Brazil, for considering a brand beyond the "traditional" types, demonstrating that the INPI has been committed to keeping up with market trends
Although the possibility of registering a position trademark has existed since September 2021, the INPI granted the first registration of such a type of trademark only in May 2023, in response to a request from the clothing and accessories company Osklen, that sought to protect, through the placeholder, the three eyelets positioned on top of the sneaker models produced by her
The INPI understood that the eyelets define Osklen's footwear and that, even being a common adornment in sneakers, the way they are specifically applied (sequence of three eyelets on the footwear) has been used only by Osklen, among shoe manufacturers, what makes your products unique in the market, in order to characterize an element sufficiently distinctive to be considered as a trademark
With the granting of the position mark registration of the three eyelets, Osklen now has exclusive use of this element, being able to prevent third parties from using similar items in their products, what guarantees the company's position in the market and reaffirms the individuality and exclusivity of its shoes, factor of extreme importance in the fashion segment
On the other hand, against the favorable decision for Osklen, INPI denied the application for position trademark registration of the renowned French brand Christian Louboutin, when trying to register the famous red-soled characteristic of their high-heeled shoes
Although the red sole is already notably associated with Louboutin, the INPI did not accept the request because it understands that the red color applied to high-heeled shoes is not a sufficiently distinctive element, not being able, therefore, to ensure the exclusivity of use and the granting of the position mark registration
The Louboutin case has not yet come to an end, because the company, disagreeing with the denial, filed a lawsuit for nullity against the INPI's decision, claiming lack of basis and that the red soles of the brand are already characteristics in the market and globally recognized
The inclusion of position marks in the INPI registration modalities means both a demand from the market itself to protect this type of mark and also an incentive for companies to consider also adding this element in the branding of their products and services., once it is now possible to guarantee the exclusivity of use of this type of brand
Currently, in the INPI, more than 200 position mark applications from various market segments are pending, This shows a strong interest on the part of undertakings to seek exclusivity in the use of the distinctive elements of their products and services.
In fact, the registration of position marks is highly recommended in many cases, in order to protect products and services containing them. However, Each case should be reviewed by experts in the field., in order to determine whether the existing elements meet the criteria and registration requirements of the INPI
