The French brand Christian Louboutin applied for protection for the famous red sole of its shoes in Brazil back in 2009, when there were no regulations for so-called “position marks” in the country. In 2021, with the Brazilian Patent and Trademark Office (BPTO) Administrative Rule n. 37, this type of registration was allowed, which is why his application was classified under this new category.
The Administrative Rule provides that a distinctive combination capable of identifying products or services from others that are identical, similar, or alike, may be registered as a position trademark, provided it is formed by the application of a sign in a singular and specific position (i) and provided the application of the sign in said position may be dissociated from its technical function (ii).
Thus, after receiving 215 applications for registration of a mark of position, the BPTO decided to reject the application filed by the company, on the grounds that the iconic red sole did not meet the requirement of distinctiveness of the sign applied, which is mandatory for trademark protection by the federal entity.
This decision goes against several others issued internationally, and also came as a surprise because the position trademark of the famous red sole was responsible for prohibiting the production of footwear with red soles by the trademark “BRUNA SILVÉRIO SHOES,” in an unanimous decision rendered by the 1st Reserved Chamber of Business Law of the São Paulo Court of Justice, recognizing that consumers associate this characteristic with the company that owns the Louboutin’s trademark, due to the violation of its trade dress.
However, it is still possible for the owner of the mark Louboutin to appeal against the rejection of the application, with the expectation that the decision be reviewed by the General Coordination of Appeals and Administrative Nullity Procedure of the BPTO.
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