Article | Louboutin’s position mark in Brazil – BRPTO’s rejection decision is suspended

Louboutin’s attempt to register the red sole of its shoes as a position mark before the BRPTO has become one of this year’s most prominent legal cases in Brazil. Recently, Judge Marcia Maria Nunes de Barros, from the 13th Federal Court of Rio de Janeiro, issued an injunction suspending a previous decision from the BRPTO, which rejected Louboutin’s application to protect the red sole as a position mark.

Christian Louboutin is one of the most renowned brands in the world in the commercialization of luxury shoes, bags, and accessories. Since its first store, opened in 1992, in France, Louboutin has established high-heeled shoes with red soles (Pantone color no. 18.1663TP) as a brand signature.

Through time, the French designer’s signature has obtained registration as a position mark in more than 20 countries. On the other hand, in Brazil, position marks were regulated recently, by means of Ordinance No. 37/2021, and, from October of the same year, their application became possible before the BRPTO. Before this regulation, only word, figurative, composite, and three-dimensional marks were eligible for registration in our country.

Important to state that Loubotin’s legal representatives have been trying to register the red sole as a trademark since 2009 in our country. Back then, as a tridimensional mark. With the publication of Ordinance No. 37/2021, the trademark’s presentation was amended at the end of 2022, and, in May 2023, the application was rejected by the BRPTO, based on Art. 122 and Art. 124, item VIII, of the IP Law, and on the Brazilian Trademarks Manual.

Louboutin’s legal representatives in Brazil took the case directly to the judiciary sphere and recently obtained the injunction suspending BRPTO’s rejection decision. The Judge of the case highlighted the need to preserve the brand’s interests against competitors and pointed out the plausibility of the plaintiff’s arguments regarding the distinctiveness of the application for Louboutin’s position mark.

In addition, it has been stressed that the red sole has been widely used for years as a visual identity by Christian Louboutin, and it is recognized by consumers of luxury articles and people with an interest in the fashion and accessories industries. The decision also highlights the impossibility of affirming that the designer has been the first one applying the red sole in its shoes, however, according to the Judge, the consistent use of this signature through the years is undeniable. On the other hand, the Judge also mentions that the indiscriminate appropriation of colors for shoe soles could cause problems for the system (by prohibiting the legitimate use of previous users, or by the absence of colors in the public domain for use by competitors) and highlights that this matter must be carefully examined.

The process is still running, and the arguments of both parts are being analyzed. However, the suspension of the BRPTO’s decision is a positive first outcome to the applicant.

For more information, please do not hesitate to contact us at international@simoes-ip.com

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REFERENCES

Process: 5082257-22.2023.4.02.5101

“Juíza impede reprodução de sola Louboutin até definição de registro”, available at https://www.migalhas.com.br/quentes/391681/juiza-impede-reproducao-de-sola-louboutin-ate-definicao-de-registro

“Juíza suspende decisão do INPI que negou registro de marca de posição à Louboutin”, available at https://conjur.com.br/2023-ago-17/suspensa-decisao-inpi-negou-marca-posicao-louboutin