Partner Philippe Bhering contributed with comments to Valor Econômico Newspaper’s report about the decision of the Brazilian Patent and Trademark Office (BPTO) rejecting Louboutin’s red sole application for a position mark.

The registration of a sign as a position mark became admissible in Brazil on October 1st, 2021, when Ordinance No. 37/2021 issued by the BPTO came into effect.

Recently, the BPTO published the rejection decision of the position mark application for Louboutin’s red sole, citing alleged lack of distinctiveness.

According to Philippe Bhering, it is not uncommon for the INPI to reject the application in the first administrative instance. The applicant, in these circumstances, he continues, can always submit evidentiary material in the second instance to demonstrate the distinctiveness of the claimed sign. In this specific case of Louboutin, one can argue that distinctiveness has been acquired through the repeated use of the sign over a long period of time. And this is a matter of evidence to be presented, in this case, along with a potential appeal.

 

The full article can be read (in Portuguese) here.

 

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