A trademark is a sign used to distinguish and identify a product or service. The Industrial Property Law provides for the possibility of registering all visually perceptible distinctive signs, as long as they are not included in the legal prohibitions (article 122 of the Civil Code), Law 9.279/96).

As for presentation, until September 2022 the Brazilian trademark registration system provided for the protection of word marks (protection of the word that constitutes the mark), figurative marks (protection of a drawing that symbolizes the mark), mixed marks (combination of the figure/drawing plus the word in stylized writing), considered traditional marks, and three-dimensional marks (protection of the plastic form - packaging or the product - capable of individualizing the product), the only type of non-traditional mark that could be registered in Brazil until then.

With the advent of Ordinance 37 of September 13, 2021, the INPI began to provide for the possibility of registering position marks, a type of non-traditional mark that had previously been registrable in countries such as France, the United States, the United Kingdom, Japan, Italy and Spain, among others.

There are various types of non-traditional brands, such as movement, tactile, olfactory, sound, taste, holograms, three-dimensional, position and others.

As provided for in the aforementioned resolution, the distinctive set formed by the application of a sign in a singular and specific position on a given support will be registrable as a position mark, provided that it is dissociated from a technical or functional effect.

The Ordinance established the possibility of changing the form of presentation of applications for registration of this type of trademark made before the rule came into force, allowing interested parties to change their applications within 90 days of its entry into force.

This is how the emblematic case of the trademark position of Christian Louboutin's famous red-soled shoe has gained great repercussions in recent months.

The trademark, initially applied for in 2009 under a three-dimensional presentation, sought to protect the red sole of a high-heeled women's shoe with a specific shade (Pantone No. 18.1663 TP), except for the heel.

Using the option to change the presentation of the trademark, provided for by INPI Ordinance 37/2021, the owner of the trademark applied to the Autarchy, requesting a change from a figurative trademark to a position trademark.

When it was examined on the merits, the application for the trademark for the famous red-soled shoe was rejected on the flimsy grounds that it did not meet the requirement of the distinctiveness of the sign applied for.

This decision was heavily criticized for its lack of reasoning. And rightly so, since the Trademark Manual (2023) is clear when dealing with the substantive examination and analysis of applications for position marks, stating that: "The uniqueness of the position refers to it being peculiar in support, not being a position traditionally used for the application of trademark signs".

When dealing with the analysis of distinctiveness, the same Manual states that: "For the position mark to meet the requirement of distinctiveness, it is necessary that the application of the sign to the support results in a distinctive whole, being perceived as a mark. The examination of a position mark primarily assesses whether the ensemble resulting from the application of a trademark sign on a given support has distinctive potential, bringing together characteristics (uniqueness of the position and distinctiveness of the sign) that make it capable of being recognized by the consumer and associated with the product or service it marks - regardless of whether the sign is already in use in the market.".

The holder of the application then waived her right to an administrative appeal against the decision and appealed to the courts seeking to have the decision annulled.

A preliminary injunction was granted to suspend the administrative act that rejected the trademark application until the end of the process.

The Judge of the 13th Federal Court, Dr. Márcia Maria Nunes de Barros, rightly ruled that the application for registration of the position mark was distinctive to the extent that: a) it is formed by the application of a sign (red color with specific shade Pantone No. 18. 166TP) in a specific position (sole, except for the heel area). 166TP), in a specific position (sole, with the exception of the heel area) of a given support (high-heeled women's shoes) to the holder of the application; b) the use of the sign in the specific position is not associated with a technical or functional effect; c) trademarks are not usually positioned on the sole of shoes; d) the trademark is applied in a specific position; e) the whole resulting from the application of the color red, with a specific shade - Pantone No. 18.166TP - on high-heeled women's shoes has, in principle, distinctive potential, making it capable of being recognized by the consumer public.

The magistrate also pointed out that it is public knowledge that the famous fashion designer Christian Louboutin uses the application of red soles to his high-heeled women's shoes as a form of visual identity for his products, as well as the fact that he has registered the trademark in more than 20 countries. In this way, maintaining the decision to reject the trademark could cause a great deal of damage to the brand, since the competition could believe that the sign was in the public domain and its use was free.

Case No. 5082257-22.2023.4.02.5101, JFRJ.

By: Vanessa Pereira Oliveira Soares

Intellectual Property | CPDMA Team