Learn the particularities and deadlines
Written by Rafael Garutti
Position marks are non-traditional marks consisting of the specific way in which the mark is affixed to (or placed on) a product.
Brazilian PTO through its Board of Trademarks, Industrial Designs, and Geographical Indications (DIRMA, acronym in Portuguese) opened a public consultation on April 13th, 2021, regarding the protection of position marks in Brazil.
The responsible committee received 105 contributions from the general public and after analyzing and replying to them, it was issued the Ordinance INPI/PR nº 37/2021 and the Technical Note No. INPI/CPAPD nº 02/2021, published on the Brazilian IP Official Gazette (RPI) no. 2646 of September 21st, 2021. See the main topics of the subject below.
According to the Art. 1, item I of the Ordinance INPI/PR nº 37/2021, the definition of position mark is “the distinctive set capable of identifying goods or services and distinguishing them from others identical, similar or alike, provided that it is formed by the application of a sign in a singular and specific position of a support”.
It is important to mention that that sign must be composed by any elements visually perceptible (due to the Article 122 of Brazilian IP Law) or their combinations, such as: words, letters, numbers, ideograms, symbols, drawings, images, figures, colors, patterns, and shapes; if they are not included in the legal prohibitions.
Furthermore, the application of the sign to the support must be dissociated from technical or functional effect (Art. 1, item II of INPI/PR nº 37/2021 and Art. 124 item XXI of Brazilian IP Law).
Change of Presentation
It will be possible to change the form of presentation of trademark applications that are still awaiting the examination and that meet the requirements of position marks (e.g.: change from Name&Device mark to position mark).
Voluntary requests related to that change shall be accepted until December 30th, 2021, and office actions can be raised ex officio by the examiners. The applicant can agree or not with Brazilian PTO opinion, however, the office action must be replied in due date.
Remark: In case of changing the form of presentation to “position mark”, the application will be republished for opposition by third parties according to item 10.1 of the Technical Note No. INPI/CPAPD nº 02/2021.
Application filing form / Examination
Since the Brazilian PTO system needs adaptions to internally process the position marks applications, the applications shall be not analyzed at this moment, however, the three-dimensional marks filing form can be used to file position marks in Brazil.
Description of goods/services
The support/product/object used as the basis for applying the sign should be compatible with the goods and services claimed. For instance: If a trademark application in class 21 is filed covering “coffeepots, non-electric; bottles; pans”, but the image of the object shows a coffeepot, the items “bottles; pans” shall not be accepted.
The Article 124 of Brazilian IP Law brings the signs that are not registrable as marks in Brazil, for instance: letters, numerals, and dates, standing alone, except when endowed with sufficiently
distinctive form (item II), and colors and their names, unless arranged or combined in a peculiar and distinctive manner (item VIII).
Beyond that article, the Ordinance INPI/PR nº 37/2021 shall be used to justify the refusals of position marks. It is important to highlight that the position of the sign applied to the object must be distinctive.
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