by José Antonio B. L. Faria Correa
December 27, 2012
For a long time the Brazilian Patent and Trademark Office (BPTO) accepted the submission of a coexistence agreement as a means to permit the registration of a mark otherwise to be regarded as likely to arouse confusion or association with a senior one. Such rule, however, did not apply where the marks involved were identical and intended for the same goods or services.
That practice was subsequently suspended due to a dissenting view of the board of attorneys of the BPTO and for this reason a large number of appeals against rejection remained in abeyance until the issuance of a uniform opinion on the question.
On August 21, 2012, the BPTO published a Normative Legal Opinion (INPI/CPAPD 001/2012) consolidating the view that coexistence agreements are to be taken into consideration as an element for the analysis of applications. While the examiners will not be bound by the consent of the owners of the blocking marks and may therefore reject or confirm the rejection of applications if they consider the marks involved as conflicting, the evidence of a consent will constitute a valuable argument to avoid or challenge a rejection.
This Normative Legal Opinion also contemplates the possibility for the examiners to raise office actions inviting the applicants to adjust the list of products or services envisioned or even introduce modifications in the marks themselves so as to permit their coexistence with the earlier marks cited as obstacles.
This Normative Legal Opinion became effective as of its publication and we expect it to be very beneficial to private parties that are able to avoid potential disputes or settle actual conflicts through coexistence agreements, although the coexistence agreements will not be automatically accepted by the Office.