Even with a certain delay compared to the rest of the world, the controversy surrounding the red soles of Louboutin shoes arrived in Brazil and the discussion is in full swing.

Position marks were regulated in Brazil only in September 2021, coming into force in October through the Brazilian Patent and Trade Mark Office (BPTO) Ordinance No. 37 of 09/13/2021. Since then, the position mark has been granted to Osklen, in relation to the three little holes located on the side of the shoe as a position mark. The same did not happen with Louboutin’s red soles.

The application for registration of Louboutin’s position mark, filed in 2009, was initially not suitable as such and designated products in class 25, namely clothing, footwear and headgear. Once readjusted, BPTO conducted its analysis of the brand in order to prove that from a formal point of view, the technical requirements were met, however, the distinctiveness requirement was not. For this reason, the application for registration of this position mark was rejected. In view of this decision, Louboutin filed an action to try to annul the BPTO’s decision with a request for an injunction to have the BPTO’s decision rejecting the application for position mark registration.

To support the injunction request presented by Louboutin, a series of documents and decisions were gathered that granted the trademark right to the sole of the shoe, coming from patent and trademark offices around the world such as EUIPO – European Union Intellectual Property Institute , as well as the judgments of the General Court and the Court of Justice of the European Union, as subsidies to highlight the protection to be conferred by trademark law as well as the risks in case of non-granting.

Because of this, the Judge of the 13th Federal Court of Rio de Janeiro granted the request for an injunction to suspend the BPTO’s decision and analyze the merits of the nullity action. The decision can be read in full here.

Peduti Advogados is attentive to developments in trademark protection in Brazil through position marks and is prepared to help its clients obtain this type of protection.

—

Author: Alexandre Miura, Laila dos Reis and Cesar Peduti Filho, Peduti Advogados.

Source: Link

—

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”