Coexistence of trade marks: Brazil's new norm

A bulletin from Di Blasi Parente & Associados (Rio de Janeiro), "BPTO’s Normative Opinion on Trademark Coexistence Agreements is published", brings some important news for those seeking to register their trade marks on Brazil's increasingly crowded register.  It reads as follows:

"After a long wait, the BPTO’s Attorney-General issued normative opinion INPI/CPAPD No. 001/2012, which deals with the treatment of coexistence agreements submitted to the Office for the purpose of facilitating the registration of trademarks or for maintaining in force remaining registrations or applications in case of transfer of ownership. Trademark coexistence agreements are generally entered into by owners of identical or similar trademarks establishing limits and conditions of use, within which the proprietor of the earlier trademark will not attempt to prevent the use or registration of the later one.

Until 2010, the understanding set out in BPTO’s Interim Guidelines for the Analysis of Trademarks was that this kind of agreement could, under certain circumstances, prevent the application of the legal prohibition of registration of a junior trademark deemed to be similar or identical to a senior trademark registration. With the publication of the new guidelines in December 2010, the text in question was suppressed and a considerable part of the trademark applications involving coexistence agreements, were put in abeyance.

The normative opinion, which came to remedy this omission, determines the inclusion of the text in the Guidelines, setting in short that such agreements are not able to, per se, prevent the application of legal prohibitions to the registration of trademarks; yet, they will be considered as subsidies to the examination of trademarks by the BPTO. According to the normative opinion, if, despite the coexistence agreement, there still remains a likelihood of confusion, the examiner may issue an office action, determining the owner of the junior application (or the assignor of the trademarks) to restrain the scope of products or services identified by the sign.

Moreover, in a significant innovation, the normative opinion admits amendments to the trademark itself in order to exclude the conflicting element, provided that this is viable and that the distinctive character of the trademark is preserved. We should bear in mind that until today the BPTO has been denying the trademark owners the possibility of removing elements from the trademark after the publication of the relevant application.

This normative opinion has deemed to be similar brought clarity and publicity to a point of great importance for trademark proprietors in Brazil. This new guideline is effective as of now, being applicable to the analysis of pending cases involving trademark coexistence agreements".

Coming ahead of Brazil's hosting of the Football World Cup in 2014 and Summer Olympics in 2016, this would appear --  at least in theory -- to strike a reasonable balance between the legal provisions that restrict or prevent the registration of confusing marks, the ability for businesses to fine-tune their own branding strategies and the protection of consumers.