BPTO began Accepting Applications for Position Trademarks
The Brazilian Patent and Trademark Office (BPTO) began accepting applications for position trademarks on October 1, 2021, offering a new mode of protection for brand owners in a growing market.
On October 1, 2021, The Brazilian Patent and Trademark Office (BPTO) began accepting applications for position trademarks. After extensive studies and a public consultation, the BPTO 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. A position mark is a mark that is characterized by being placed in a special spot on the product. The position mark was previously recognized by the BPTO and the courts, but still had to qualify for separate trademark registration. Most trademark owners have registered as images or 3D trademarks. The new registration category came after several months of public debate by BPTO and was part of their 2021 action plan.
The position mark is protected by registering it under another trademark category, even if it was not explicitly recognized by Brazilian Intellectual Property Law prior to Rule No. 37/2021 (September 13, 2021) can be granted. BPTO also offers an option to search for location marks in online databases. Therefore, no legal changes were required for BPTO to start accepting position stamp applications. Brazil’s Industrial Property Law (Federal Law 9.279 / 96) has already defined a registerable mark as a distinctive, visually recognizable sign that, by definition, must include a position mark.
In order to be registrable in Brazil, a position mark must consist of a distinctive sign, affixed in a singular, specific position on a good or service, dissociated from any technical of functional effect, according to Ordinance No. 37/2021.