Position trademarks: the legal challenge of protecting distinctive designs in a visually driven world
The referenced image is noThe referenced image is not copyrighted, and is included with the intention of referring to the original Christian Louboutin shoes and its iconic red sole as a position trademark par excellence. In which case, if they are not original products, we reiterate the need for protection of these marks by condemning the unauthorized use of these distinctive signs; also emphasizing that if they are counterfeit products that seek to evoke this business origin, such behavior confirms the importance of these marks in today’s market.
By Paula Caraffa and Antonella Balbo
Introduction
In the fascinating realm of trademark law, non-traditional figurative marks, whether two-dimensional or three-dimensional, are still awaiting the appropriate protection demanded by today’s reality.
It’s undeniable that certain designs and colors can attract attention more effectively than wordmark elements.
In today’s highly competitive and creative landscape, a comprehensive intellectual property (IP) protection is vital, that should be aligned with our current commercial realities.
In view of the above, we believe it is necessary to introduce the analysis of “position trademarks”, a type of non-traditional figurative trademarks that, gradually, are being expressly recognized by the legislations of various countries in the region.
This article delves into the concept of “position trademarks”, their current regulatory status in several jurisdictions, and their relevance in the IP world.
What are position trademarks?
Position trademarks constitute a specific category in trademark law, distinguished by the unique and specific way in which certain elements or colors are placed or affixed to a product.
Examples include the iconic red soles of Louboutin shoes, whose protection was recently acknowledged by the Brazilian Courts[1]:
We also bring as another example the metallic-colored star on the front and center bottom of underwear, which is a registered mark in Colombia:
These examples emphasize the significant distinctive role that position trademarks play in today’s market, safeguarding sound business practices and public consumers.
How are these marks graphically represented to clearly identify the position of the characteristic elements or colors in relation to the products to which they are applied?
The answer to this question is crucial, because the protection that position trademarks grant is over the specific placement of the distinctive elements or colors on the applicable product, requiring distinctiveness and exclusivity.
Some countries with explicit regulations on position marks require distinctive elements to be highlighted from the object to which they are applied with a continuous line, while non-claimed portions are indicated with dashed or dotted lines.
An interesting detail is the specific location of the protected claimed elements and the object not seeking protection in these marks. This can be illustrated by the description of the previously referred position trademark registered in Colombia, which reads:
“The position of a metallic-colored star, located on the central lower front part of the underwear. The dotted line is not a characteristic feature of the mark and serves the purpose of indicating the location of the star on the underwear. No exclusivity is claimed over the shape of the product or the color of the star”.
Countries in Latin America that expressly recognize position marks in their legislation
- Chile
In Chile, position marks were regulated in 2022, by the trademarks processing instructive that defines the proper representation of such marks. This was approved by Resolution No. 135, stating that position trademarks are adequately represented by an image that appropriately identifies the specific position of the mark and its size or proportion, in relation to the products they intend to distinguish.
The regulations expressly require declarations of visual waiver, preferably represented by discontinuous or dotted lines, for the elements not forming part of the sought protection.
- Colombia
A similar scenario unfolds in Colombia. Decision 486, an Andean Community regulation governing Industrial Property matters in the country, allows the registration of any sign capable of distinguishing products or services in the market, provided they are susceptible to a graphic representation. Among this definition, position trademarks are included.
Registration requirements are provided in section 1.2.5.17 of Chapter One, Title X of the Industrial Property Single Circular issued by the Industry and Commerce Superintendence (Trademarks Office), published on January 2, 2023.
This circular describes as requirement for a position trademark application, a graphic representation that is clear and unequivocal about the position, size, arrangement, and proportion of the requested sign, on the surface where it will be applied. Additionally, it requires dotted lines defining the elements not forming part of the protection.
It is noteworthy that the guideline for the Registrability Examination of trademarks, issued by this same entity, refers to position trademarks as signs that can be registered in Colombian territory.
- Brazil
Brazil is another country at the forefront on this matter. Ordinance No. 37/21 issued by the Brazilian INPI established the requirements for the registration of position trademarks, demanding that the distinctive sign be affixed in a peculiar manner and that its affixation be dissociable from the functional or technical effect of the product.
Despite the provisions regulating these marks since 2021, it was only in 2023 that Osklen, a Brazilian fashion company, successfully obtained the first registration of a position mark in the country. The registered mark consists of a set of three eyelets positioned on the front of the brand’s sneakers, a distinctive detail of their products, as illustrated below:
Countries that do not expressly recognize position marks in their legislation
In Argentina, our legal provisions do not provide a specific definition and protection for position trademarks. However, these signs constitute a valid option for register because, according to our legislation, any distinctive sign can be registered. In common practice, to seek protection for signs representing position marks, the same dynamics are followed as in the countries where these marks are expressly recognized: the claimed design is outlined with continuous lines, while the unclaimed object is indicated with dashed lines, in addition to a description of the design that is sought to protection.
Paraguay resolves the issue in the same manner, as there is also no express regulation of this type of marks. During registration, they are entered under “figurative” marks, and the authorities of the country have recommended the indication at the end of the coverage that it is a position trademark, so that the application is treated as such when evaluating its registration.
This same situation is replicated in Uruguay.
In Mexico, although trademarks provisions were amended in 2018 to add certain non-traditional marks, position trademarks were not included. Within the expressly regulated, however, Mexico has trade dress marks, (mentioned above when referring to the matter in the US). Position marks may then be registered as such in this country.
For their part, In Peru, they are not expressly regulated, but they have been allowed and processed within the general regulatory framework of national IP law. Hence, the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI), on its website, provides explicit examples of non-traditional marks, among which includes as example, shoe soles’ position marks.
Comparative law analysis
Europe
In Europe, this type of marks is expressly recognized.
The guidelines concerning the examination of EU trademarks, as per Article 3, paragraph 3, letter d), of the EUTMR, establish that a position mark is a mark that consists of the specific manner in which the mark is placed or affixed to the product. The guidelines emphasize the need for proper identification of location, size, or proportion in relation to the relevant products, along with visual declarations of elements not intended for registration. A visual declaration of waiver for elements not intended to be part of the registration is also required, preferably indicated with discontinuous or dotted lines. Optionally, a description detailing how the sign adheres to the products may be included.
For illustrative purposes, the following is an example of a registered position mark with the EUIPO trademark office:
Non-traditional marks in the United States
In the United States, we believe the marks at hand fall under the umbrella of “trade dress” protection, safeguarding the distinctive appearance of signs that meet the criteria of distinctiveness and non-functionality.
The term “trade dress” refers to the overall image and general appearance of a product, or the total elements that compose it, and may include features such as size, shape, color or color combinations, texture, graphics, among others.
The Lanham Act allows the registration of these non-traditional marks with the US Patent and Trademark Office (USPTO).
Examples of protected elements include the checkerboard pattern on Vans sneakers, the lid of Dreyer’s ice cream’s design, and the design elements of Nike Jordans. These have been registered as trademarks, and may apply as example when speaking about position trademarks:
Final thoughts
Position trademarks should be expressly acknowledged by the legislation as autonomous elements capable of indicating a specific business origin. Or, does not everyone nowadays identify the brand owner of the iconic red soles in high hills?
This trademark concept offers an innovative way to protect industrial property, especially in clothes and accessories industries, where the specific position of a design can be crucial for product identification and differentiation.
Therefore, the acceptance of position marks in various Latin American countries represents a significant advance for industrial property law, encouraging other jurisdictions to follow suit.
This new paradigm aligns with the ultimate goal of IP provisions –which is providing proper legal protection to all distinctive signs that are present in the minds of the public consumer.
[1] JUSTIÇA FEDERAL. Seção Judiciária do Rio de Janeiro. PROCEDIMENTO COMUM Nº 5082257-22.2023.4.02.5101/RJ AUTOR: CLERMON ET ASSOCIES. RÉU: INPI-INSTITUTO NACIONAL DA PROPRIEDADE INDUSTRIAL
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Acknowledgments
Last but not least, we thank our colleagues Leticia Natividad in Mexico, Magalí García in Peru, Natalia Paladino in Uruguay, María Laura Vega in Paraguay, and Helena Camargo in Colombia for their time and shared experiences. It is our pleasure to have colleagues whose generosity is undoubted.
For further information please contact pmcaraffa@ojambf.com
