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Updated Guidelines for Trademark Examination broaches the subject of Coexistence Agreement
On December 11, 2012, the Brazilian PTO issued updated Guidelines for
Trademark Examination. One of the most important amendments in the
mentioned Guidelines refers to Trademark Coexistence Agreement (this
subject was not mentioned in the previous Guidelines).
According to the updated Guidelines, Trademark Coexistence Agreements will be taken into consideration by the PTO merely as a subsidy to the examination of the trademark or to the examination of appeals against rejection decisions. It is clear that the PTO is not obliged to allow the coexistence of trademarks merely because an Agreement has been submitted. Trademark Examiners must always analyze whether Article 124, item XIX, of the Industrial Property Law should be applied to the case, regardless of whether a Trademark Coexistence Agreement has been submitted (the mentioned legal provision prohibits the registration of any mark that is a reproduction or imitation of a registered mark, intended to distinguish at least related products or services, which is likely to cause consumer confusion or undue association if allowed to coexist with the registered mark). The Agreements shall be accepted whenever the PTO is convinced that there is no possibility of consumer association or confusion between the applied-for trademark and the previously-registered trademark, in which case Article 124, item XIX, of the Industrial Property Law, shall not be applied. The PTO may issue the following official actions whenever a Trademark Coexistence Agreement is being examined:
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