Ordinance No. 37
On September 13, 2021, the Brazilian PTO issued Ordinance No. 37, ruling the registrability of position marks, which will go into effect on October 01, 2021.
According to Ordinance No. 37, a distinctive sign which is capable of identifying goods and services and distinguishing them from other identical, similar or related goods/services, can be registered as a position mark, as long as (i) it is formed by the application of a sign in a peculiar and specific position of a certain support; and (ii) the application of the sign in the mentioned position of the support can be dissociated from a technical or functional effect.
Please be advised that it is possible to request at the PTO, the alteration of the trademark presentation form to position marks in connection with pending applications filed before October 01, 2021. However, such requests must be submitted until January 02, 2022.
The PTO will proceed with the analysis of position trademark applications only after the necessary adjustments to the prosecution of these applications in the PTO’s systems are carried out. Although the date on which the electronic petitions relating to position marks will become available has not yet been established, it is possible to use the eletronic petitions relating to tridimensional marks, indicating that the petition actually refers to a position mark.
Further information on this matter will be provided as soon as the PTO issues new rules. In the meantime, should you need any additional information, please do not hesitate to contact us.