INPI public consultation opens the door to registration of position marks

The Brazilian Institute of Industrial Property (INPI) has been implementing significant institutional and operational changes for the past two years in order to improve its standing among the leading IP institutes in the world.

For instance, it has launched a plan to combat the patent backlog, which aims to reduce the number of pending patent applications by 80% by December 2021, as well as to shorten the process for patent examination and grant to between three and four years.

With regard to trademarks, in October 2019 the examination period and granting of trademark registrations was reduced to six to 12 months in order to allow the implementation of the Madrid Protocol. In addition, since December 2021, INPI has made the full content of decisions related to trademark prosecution available. The following decisions published in its Official Gazette as of 15 December 2020 are now available:

• grant of applications;
• office actions;
• rejection decisions; and
• stay of the examination due to earlier rights pending registration final decision.

More recently, INPI has launched a public consultation on the registration of position marks. A position mark is a trademark that consists of the specific way in which the mark is placed on or affixed to goods. For example, such marks are often used in the fashion sector to protect elements of decoration of shoes, glasses frames and clothes. While they are part of the non-traditional mark group – which comprises colour, scent, sound, taste, touch and moving images, among other things – position marks are still not registrable as such in Brazil. The common forms of registration currently available in the country are word, figurative, semi-figurative and 3D marks. However, the public consultation indicates that this scenario is changing in Brazil.

Indeed, the consultation aims at submitting to interested parties’ comments:

• draft of a normative act that would provide for the registration of position marks, in light of Article 122 of Law 9,279 of the Brazilian IP Law (1996); and
• draft guidelines for examining applications for the registration of position marks.

The public consultation was published in INPI’s Official Gazette on 13 April 2021. The deadline for receiving suggestions has been extended by another 30 days, as published on 11 May 2021. Interested parties now have until 12 June 2021 to send their suggestions and comments.