Professor of Commercial Law, Intellectual Property and Competition Law at UERJ and UFRJ.read +
by Enzo Baiocchi
October 19, 2021
Miuccia Prada, a famous fashion designer and maternal heiress to the Italian fashion empire, once stated that “fashion is instantaneous language”. This is a fact. Fashion creates, communicates and expresses different things through signs, establishing a real communication process. Umberto Eco also saw fashion as a semiotic system through the “language of clothing”.
In addition to the semiotic issue, which is essential to understand distinctive signs, the importance of fashion for the economy and society is unquestionable. Law, especially Trademark Law, recognises this importance and ensures it appropriate legal protection.
In Brazil, the law must also ensure that aesthetic innovations in the field of distinctive signs are duly protected, considering the country’s social interest and technological and economic development (Article 5, item XXIX, Constitution of the Federative Republic of Brazil of 1988 – CRFB/1988).
Although Law No. 9,279/1996 (Industrial Property Law – IPL) does not expressly consider the concept of position trademarks, Articles 122 and 124 do not exclude these kinds of distinctive signs from being registered as trademarks. Even item VIII, of the mentioned Article 124, allows the registration of trademarks that are composed of colours and their names, provided that they are arranged or combined in a peculiar and distinctive manner.
In fact, if they meet the legal requirements, distinctive signs can be registered as figurative, three-dimensional or mixed trademarks (a figurative mark containing word elements).
As an example, we can mention the figurative brand below:
However, despite not being expressly prohibited, the fact is that in Brazil we did not have an administrative rule that regulated procedures for analysing applications for the registration of signs whose distinctiveness results from the manner in which they are positioned.
But this has changed.
Owners of trademarks in general, and the creative industry like that of fashion in particular, have good reason to celebrate.Finally, after a long period of development, the Brazilian Patent and Trademark Office (BPTO) has unveiled the regulatory framework for the protection of so-called position trademarks: Ordinance/BPTO/PR No. 37, of 13 September 2021, and the BPTO/Committee for the Improvement of Procedures (CPAPD) Technical Note No. 02/2021, of 21 September 2021.
Described succinctly, position trademarks are held to be any distinctive, visually perceptible sign, which consists of the specific manner in which it is placed on a particular support.
In accordance with the BPTO:
[…] position trademarks are deemed to be those formed by the application of a sign in a unique and specific position on a particular support, resulting in a distinctive whole that is capable of identifying goods or services and distinguishing them from those that are identical, similar or related, provided that the application of the sign in the mentioned position on the support can be dissociated from a technical or functional effect.
Ordinance/BPTO/PR No. 37/021, sets forth the registrability of marks in the position trademark form of submission. In accordance with Article 1:
A distinctive whole that is capable of identifying goods or services and distinguishing them from ones that are identical, similar or related will be registrable as a position trademark, provided that:
I – it is formed by the application of a sign in a unique and specific position on a given support; and
II – the application of the sign in the mentioned position on the support can be dissociated from a technical or functional effect.
Thus, as the legal protection is only for the trademark, and not for the product (nor its design) where the mark is placed, it must be represented, for registration purposes, through the presentation of a support (figure, design or image) that is capable of clearly showing the details of the trademark (its exact presentation, position, colour, size and proportion in relation to the product on which it is to be placed).
In accordance with the BPTO, in applications for registration of position trademarks, this support must be represented in dotted or dashed lines, in order to evidence the trademark applied to the support and, in addition, a text with the description of the trademark must be presented, for the purpose of stating what is actually intended to be protected through the application for registration of the position trademark (items 7 and 8, of BPTO/CPAPD Technical Note No. 02/2021).
As an example:
The topic is similarly regulated in the European Union, whose member countries have a long tradition and experience in regulating position trademarks. Article 3, paragraph 3(d), of the Implementing Regulation (EU) No. 2018/626, which establishes the rules for implementing certain provisions of Regulation (EU) No. 2017/1001 on the European Union trademark, reads as follows:
[…] in the case of a trade mark consisting of the specific way in which the mark is placed or affixed on the goods (position mark), the mark shall be represented by submitting a reproduction which appropriately identifies the position of the mark and its size or proportion with respect to the relevant goods. The elements which do not form part of the subject matter of the registration shall be visually disclaimed preferably by broken or dotted lines. The representation may be accompanied by a description detailing how the sign is affixed on the goods.
For its part, the European Union Intellectual Property Office’s guidelines for the examination of trademarks (EUIPO Trade mark Guidelines) provides the following examples of registrations granted for European Union position trademarks:
Also in accordance with the BPTO, in procedures pending examination, the option to adapt the form of submission will be afforded. That is, the BPTO may formulate an office action for the applicant of the registration of a figurative, threedimensional or mixed trademark to state whether they agree with changing the form of submission of the application to a position trademark, provided that there is evidence that a position trademark is the appropriate form of submission (item 10, of Technical Note BPTO/CPAPD No. 02/2021).
The BPTO Technical Note also regulates the procedures related to the analysis of applications for registration of position trademarks. Careful reading is recommended, as there are many criteria and requirements demanded by the BPTO to grant the registration of position trademarks from the perspective of an analysis of the specification of goods or services, the distinctiveness and availability of the sign.
We hope that trademark owners will have no difficulty in meeting the demanding criteria established by the BPTO for the protection of their position trademarks. The biggest challenge thus far had been the absence of specific regulations on the subject.
Any professional or company executive knows that, in order to remain competitive, it is necessary to be creative. But creating is not enough. To impress, attract attention, it is necessary to innovate and revolutionise.
In the field of Trademark Law, this translates into the distinctive potential of the sign, which will be decisive when assessing the distinctiveness during the administrative process of examining applications for registration of position trademarks at the BPTO.
Thus, in accordance with item 13 of BPTO/CPAPD Technical Note 02/2021: “the more unique the position in which the sign is applied, the greater the distinctiveness of the whole […], the more distinctive the sign applied, the greater the distinctive effectiveness of the position trademark”; while item 12 requires “that the application of the sign on the support results in a distinctive whole, being perceived as a trademark”.
However, it was not clear in the text whether such distinctiveness must be inherent and therefore verified a priori, or whether it can be acquired, that is, confirmed a posteriori, for example, as a result of an acquired distinctiveness or secondary meaning. In the absence of an explicit prohibition, we hold that acquired distinctiveness not only can, but must be considered.
Outside the strictly normative context of Trademark Law, so-called position trademarks are good examples of innovation in the field of marketing, especially as a branding strategy aimed at new ways of creating and promoting brands in the market. As Umberto Eco said, clothing “speaks” – and we can complement this by stating that this communication process continues in the functions carried out by trademarks.
The greater the uniqueness of the trademark’s position on the product, the greater the degree of distinctiveness achieved. It is an aesthetic innovation applied in the field of trademarks. Position trademarks become, so to speak, a kind of “signature” for the product.
There is no doubt that this branding strategy is inserted into a larger context called the entrepreneurial act. The creation of a new method for the production or circulation of goods or services is a genuine entrepreneurial act that involves a creative process of innovation, so-called “creative destruction” (schöpferische Zerstörung), which is the essential fact of capitalism, according to Joseph Schumpeter.
This is also known as “Schumpeter’s gale” (the gale of creative destruction), which describes a “process of industrial mutation that continuously revolutionizes the economic structure from within, incessantly destroying the old one, incessantly creating a new one”.
In the particular case, in light of the Schumpeter’s gale, we see the introduction of a new method of production and marketing in the field of distinctive signs.
The innovative act is precisely about conceiving a position for a trademark on a particular product or service, in order to make it, at the same time, new and original, unique and distinctive, capable of identifying and distinguishing goods or services from ones that are identical, similar or related.
Innovating pays off even in the field of distinctive signs.
Brazilian legislation must recognise and protect this innovative effort. After all, the Federal Constitution (Article 5, item XXIX, CRFB/1988) guarantees that the law will ensure protection for the ownership of trademarks, bearing in mind the social interest and technological and economic development of the country.
This is also true for the protection of trademarks in other forms – called non-traditional or unconventional trademarks – such as sound, animated, multimedia or holographic trademarks, among others.
Now that the BPTO has recognised, de lege lata, the protection of position trademarks, entrepreneurs and legal practitioners have an interesting tool to protect the reputation and goodwill associated with this type of mark in Brazil.
 Available at: https://www.revistalofficiel.com.br/moda/10-frases-do-mundo-da-moda-para-te-inspirar. Accessed on: 11 October 2021.
 ECO, Umberto et al. Psicologia do vestir [Psychology of clothing]. Assírio & Alvim: Lisboa, 1975, pages 15-16 and passim.
 Available at: https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/PortariaINPIMarcadePosio.pdf. Accessed on: 11 October 2021.
 Available at: https://www.gov.br/inpi/pt-br/servicos/marcas/arquivos/legislacao/NT_INPI_CPAPD_02_21.pdf. Accessed on: 11 October 2021.
 V. item 3, of BPTO/CPAPD Technical Note No. 02/2021.
 Available at: https://guidelines.euipo.europa.eu/1922895/1926066/trade-mark-guidelines/9-3-4-position-marks. Accessed on: 11 October 2021.
 Available at: https://eur-lex.europa.eu/legal-content/PT/TXT/PDF/?uri=CELEX:32018R0626&from=EN. Accessed on: 11 October 2021.
 ECO, op. cit., page 15.
 SCHUMPETER, Joseph Alois. Capitalismo, Socialismo e Democracia [Capitalism, Socialism and Demoncracy]. Rio de Janeiro: Editora Fundo de Cultura, 1961, page 106.
 In some cases, such as tactile marks (signs with a tactile effect or sensation), smell (olfactory) marks or taste marks, the granting of the registration will depend on the availability of technologies that allow the correct and accurate representation of these types of marks under these conditions, since the simple textual description of the trademark cannot always replace its clear, accurate and objective representation for the purposes of granting the registration. At least this is the official position of the European Union Intellectual Property Office (see item 9.3.11 of the EUIPO Trademark Guidelines).