(BRPTO’s gazette of September 21, 2021)

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The BRPTO has published, in the Official Gazette #2646 of September 21, 2021, Ordinance #37, which introduces the registrability of position trademarks according to article 122 of the Brazilian Patent Statute (#9.279 of May 14, 1996).

Up to now, the BRPTO had only allowed three types of trademarks for registration: (i) word mark, (ii) device mark and (iii) figurative mark.

The Ordinance establishes that as of October 1st, 2021, position marks will also be allowed for registration in Brazil, provided that they comply with the necessary requirements:

• The position mark must be composed of a distinctive set, capable of identifying and distinguishing its products or services; and

• l It must be formed by the application of a sign in a singular and specific position of a certain support and such application must be able to dissociate from technical or functional effect.

It also determines that the presentation form of trademarks that have already been filed with the BRPTO, prior to the Ordinance coming into force, may be altered, if still pending analysis and in compliance with the requirements of a position mark. Such alteration request must be done within 90 days of the Ordinance’s effective date.

There is still not a set date for the BRPTO to adjust its system with the necessary implementations for making the filing of position marks available. Such matter will be established in a proper act, which will be discussed in a separate communication as soon as possible.

You can download a copy of the BRPTO’s original communication here. For more information regarding this matter, please e-mail us at tmprosecution@lickslegal.com.

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