When clients have a trademark rejected in Brazil or opposed by third parties, it is common to be questioned about the possibility to celebrate a coexistence agreement to overcome the rejection.
We know that in certain jurisdictions the signature of a coexistence agreement allows the trademark granting. In Brazil, it is not always true.
In accordance with the Brazilian Trademark Office opinion and resolutions, a coexistence agreement will be used as an additional document to be considered to issue a decision regarding the trademark registrability. However, this is not the main point analyzed.
The coexistence agreement is accepted to verify if the document is enough to prevent the consumers confusion related to the third-party trademark registered. If the examiners understand that the confusion between the trademarks will remain, even with the agreement, the trademark will be rejected, and the document will not be considered.
If the examiner understands that the exclusion of an item of the list of goods/services will allow the coexistence between the trademarks, an office action can be issued and, if the owner agrees with the deletion, the trademark will be granted.
However, if the trademark and the goods/services are too similar, the Brazilian Trademark Office will not consider the coexistence agreement and the trademark filed later will be rejected.
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Author: Laila Reis Araujo, Senior Associate & Head of The International Department at Peduti Advogados.
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“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.”