Strategy for Position Marks: Registering Your Brand’s Unique Placement

In September 2021, Brazil became one of the growing number of jurisdictions to formally recognise position marks as a registrable category. Regulated through INPI Ordinance No. 37/2021 and Technical Note INPI/CPAPD No. 02/2021, and subsequently consolidated under INPI Ordinance No. 08 of January 17, 2022 (specifically Article 84), position marks offer a new tool for protecting distinctive branding elements that are defined not by shape alone but by their specific and unique placement on a product or packaging.

What Is a Position Mark?

A position mark protects a distinctive element — a colour, shape, pattern, or design — applied to a specific and singular position on a product or its packaging. Unlike a figurative or three-dimensional mark, the protection focuses not on the element in isolation but on its placement in a particular location on the product.

The classic international examples include a coloured stripe on the sole of a shoe, a decorative element at a specific location on a handbag, or a particular pattern applied exclusively to the handle of a kitchen appliance. In each case, what is protected is the combination of the element and its position — the element on its own, or in a different position, would not be covered.

Requirements for Registration

Under INPI’s rules, a position mark must satisfy two fundamental conditions:

• Specific and singular positioning: The mark must be applied to a defined, consistent location on the product or packaging. The positioning itself must be distinctive — that is, it must be unusual enough to be perceived by consumers as a brand indicator rather than a standard design feature.
• Non-functionality: The placement of the element cannot be dictated by technical or functional necessity. If the element’s position is determined by the product’s function, manufacturing process, or technical requirements, it does not qualify as a position mark. The placement must be a branding choice, not an engineering one.

Filing Requirements: The Visual Representation

The technical requirements for filing a position mark are specific and must be followed precisely to avoid formal objections:

• Dashed lines for the product support: The product or packaging on which the mark is applied must be represented using dashed or broken lines. This indicates that the product itself is not being claimed as part of the mark; it merely provides the context showing where the mark is positioned.
• Solid lines for the claimed element: The actual mark — the element whose protection is sought — must be shown in solid lines. This visual distinction makes clear exactly what is being claimed and what is merely contextual.
• Detailed description: The application must include a clear written description of the mark, specifying the element, its position on the product, and the nature of the product. The description should make it possible for a third party to understand precisely what is protected.

Getting the visual representation right is critical. Applications that fail to use the dashed-line/solid-line convention correctly will face formal objections, and an unclear representation can also weaken the mark’s enforceability after registration.

The Non-Functionality Requirement in Practice

The non-functionality requirement is the most substantive hurdle for position mark applicants. INPI will assess whether the placement of the element serves a technical or functional purpose. Examples that would likely fail the non-functionality test include:

• A grip pad placed at the natural hand-holding position of a tool — the placement is functional.
• A ventilation pattern placed where airflow is needed for product performance — the placement is technically necessary.
• A reinforcement strip at a point of structural stress on a garment — the placement serves a functional purpose.

By contrast, a purely decorative stripe on the side of a shoe, a unique colour applied to the cap of a pen, or a distinctive pattern placed on the handle of a mug (where the pattern serves no functional role) are examples that could qualify as position marks.

Examination and Opposition

Position mark applications follow the standard INPI examination procedure. After formal examination, the application is published in the Industrial Property Gazette (Revista da Propriedade Industrial — RPI), triggering a 60-day opposition period. Third parties may oppose on any ground available under Article 124 of the LPI, including lack of distinctiveness and conflict with prior rights.

Substantive examination considers whether the position mark is genuinely distinctive. INPI will assess whether the placement of the element is sufficiently unusual and memorable to serve as a source indicator. Commonplace placements that consumers would expect as decorative or standard design features may be refused for lacking distinctiveness.

Strategic Recommendations

• Audit your product design for protectable elements: Review your product portfolio for distinctive branding placements that could qualify as position marks. Look for elements whose position is consistent, visually striking, and not dictated by function.
• Prepare the visual representation carefully: Engage a trade mark professional or graphic designer familiar with INPI’s requirements to prepare the dashed-line/solid-line illustration. A poorly prepared representation is one of the most common reasons for formal objections.
• Document non-functionality: If the non-functionality of the placement is not self-evident, prepare supporting arguments or evidence showing that the element’s position is a branding choice, not a technical necessity.
• Consider complementary protection: Position marks work best as part of a broader trade mark portfolio. They complement conventional word and figurative marks and can strengthen protection for distinctive product designs.
• Monitor the developing case law: Position marks are relatively new in Brazil, and INPI’s examination practice is still maturing. Tracking published decisions will help calibrate expectations and identify emerging trends.

Common Mistakes

• Claiming too broad a position: Attempting to protect an element placed “anywhere on the product” will fail. The position must be specific and consistent.
• Ignoring the dashed-line convention: Filing with all solid lines, or with an unclear representation, will trigger formal objections and delay the application.
• Overlooking functionality: If the position has any technical justification, INPI will refuse the application. Conduct a functionality analysis before filing.
• Filing without a written description: The visual representation must be accompanied by a precise written description. Omitting or inadequately drafting this description weakens the application.

Key Takeaway

Position marks represent a valuable addition to Brazil’s trade mark toolkit, offering protection for distinctive branding elements defined by their unique placement on a product. The requirements are specific — the dashed-line/solid-line convention, the non-functionality condition, and the need for a detailed written description — but for brands with genuinely distinctive product placements, this category provides a form of protection that was previously unavailable under Brazilian law. As INPI’s practice in this area continues to develop, early filers have an opportunity to establish strong rights and shape the emerging jurisprudence.