Newsletter 41st Congress Day 4


The BPTO will publish Ordinance on Positional Trademarks guidelines

During the panel “Regulation of Positional Trademarks by the BPTO”, held on the last day of ABPI’s congress, André Balloussier, Director of Trademarks at the BPTO, informed that the institute is going to publish the Normative Act and the Guidelines for the procedure of examinations for positional trademarks until September 21st.

Balloussier debated alongside Xavier Ragot, In-House at Christian Louboutin, and Lori Meddings, representative of Bobcat and Quarles & Brady, with the participation of lawyers Joana Siqueira, partner of Montaury Pimenta, Machado & Vieira de Mello and chairwoman of the ASIPI (Inter-American Association of Industrial Property) Trademark Commission and Fernanda Magalhães, partner of Kasznar Leonardos.

Applications processing
Even with the publication of the Ordinance, effective from October 1st, there is still no forecast for processing the applications, which is due, according to the Director of Trademarks, to the scarcity of resources in the IT area of the BPTO. “Applications may initially be filed using the three-dimensional trademark form, but processing will not take place until the system is properly implemented”, explained Balloussier.

French design company Christian Louboutin is awaiting the BPTO regulation to register its Red Sole trademark, the famous red sole of women’s high heel shoes in Brazil. The product, which is already protected in more than 50 jurisdictions worldwide, filed the trademark application at the BPTO in 2009 and has suffered from forgery.

According to Ragot, at customs in Santos, more than 4,000 fake shoes imported by offenders have already been apprehended. “We understand that the process in Brazil takes time until the guidelines are published, which we hope will happen soon”, he highlighted.

The situation is similar in the case of Bobcat and its tractor with red wheels and differentiated design, registered in the United States and countries in Asia, Oceania, and the European Union as secondary meaning – which refers to an initially common sign that acquires distinctive strength and effectiveness due to its continuous and intensified use in a product. In Brazil, applications have been pending at the BPTO since 2012. “We have several three-dimensional trademark applications filed in Brazil, but they are pending due to the lack of well-established legal premises”, explained the representative of Bobcat.