Consumer tendency of recognising non-traditional marks as true sources of origin

By Rafaela Borges Walter Carneiro, partner at Dannemann Siemsen

Consumer tendency of recognising non-traditional marks as true sources of origin

Over the years, more specifically since 1992, French shoe designer Christian Louboutin developed a registered trademark upon colouring the outsole of women’s shoes, which he designed in a specific shade of red. As a result, he intended to obtain trademark protection for the red outsole design element.

Position marks are commonly used in the fashion world, although they are not linked only to this market segment, but the emblematic cases of the back pocket of Levi’s Strauss jeans and New Balance trainers, which only obtained protection as position marks in Brazil following court rulings of lawsuits initiated in the 1980s and 1990s, should be mentioned.

Position marks are all visually perceptive distinctive signs, which consist of the specific way they are affixed to a given support. Thus, the greater the uniqueness of the mark’s position on the product, the greater the degree of distinctiveness achieved.

Therefore, the possibility of registering a distinctive sign in a specific position was a novelty provided by Brazilian Patent and Trademark Office (BPTO) Ordinance no. 37/2021, which has been in force since 1 October 2021.

Prior to the Ordinance, applications for registration of a figurative presentation were used to try to protect signs that, in fact, were position marks, which did not afford the due protection. This is because, although the Industrial Property Law (IPL) – 9,276/96 does not expressly include the figure of position marks, Articles 122 and 124 do not exclude the registrability of these types of distinctive sign as trademarks. Even item VIII, of the mentioned Article 124, already allowed trademarks composed of colours and their denominations to be registered, if they were arranged or combined in a peculiar and distinctive way. For example: The 3 stripes on Adidas trainers OR the blue rectangle on Keds trainers.

The mentioned Ordinance no. 37/2021 determines that the position marks eligible for registration are those composed of a distinctive whole formed by the application of a sign in a unique and specific position on a given support, capable of identifying goods or services and distinguishing them from other identical, similar, or related signs.

It is also emphasised that to be deemed a position mark, the application of the sign in the position on the support must be distinctive and have no technical or functional effect.

In May of this year, the BPTO granted Osklen the first application for registration of a position mark in Brazil for the classic “three holes” on the front of the famous Osklen brand trainers.

However, also in May (30), the BPTO held that the “red sole” did not meet the requirement of distinctiveness of the applied sign, contained in item 5.13.2 of the Trademark Manual and rejected the application for registration (of the red sole applied to women’s shoes). Hence, a lawsuit was filed to reverse the BPTO’s decision to reject the application.

In our opinion, the rejection of the “Red Sole” as a position mark registered in SEVERAL other countries is equivalent to a declaration by the BPTO that the intended distinctive sign is in the public domain, implying an impediment to the legal exercise of the respective rights that may cause enormous damage to its owner and the consumer public.

First, because the application for registration (901,514,225) aims to protect the display of a colour (Pantone red no. 18.1663TP) in an evidently unusual and non-functional manner, being the red sole of a high fashion shoe, which, within the premises related to a position mark (that is, considering its overall impression), has an undeniable character that is distinctive from the tradition of using soles in dull colours (mainly black and beige) in the footwear industry, and its rejection contravenes Articles 122 and 124, VIII of the IPL.

Second, because the application of red soles on high-heeled shoes significantly differs from the habits and/or customs of the footwear industry and is entirely arbitrary, being easily recognisable at first sight and memorised by the interested public: The application of red on the soles of high heels is perceived by the relevant public as an indication of origin linked to Christian Louboutin, distinguishing his products from those of other competitors in the market and exercising the function of a trademark.

In addition, the brand owner’s ability to act against infringements of his intellectual property is diminished and impaired, but this is already being questioned in other jurisdictions.

In short, the very recent ruling handed down by the 13th Federal District Court in Rio de Janeiro highlights the importance of protecting non-traditional marks and is therefore in line with the consumer tendency of recognising such non-traditional marks as true sources of origin.

Dannemann Siemsen

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