Updated Guidelines for Trademark Examination

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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:

official actions requesting the limitation of goods/services covered by the trademarks under examination. In cases where the PTO decides that the marks should not be allowed to coexist in view of the goods/services covered or in view of the nature of the signs, a restriction of the goods/services may eliminate the risk of confusion or association between the trademarks.
official actions requesting that the applied-for trademark itself be amended, only in cases where the withdrawal of a certain element of the trademark will make it sufficiently distinct from the previously-registered trademark.

In light of the above, we suggest being more cautions upon preparing the terms of a Trademark Coexistence Agreement, bearing in mind that depending on those terms, the PTO may decide that there is no risk of association or confusion between the trademarks and may accept the Agreement.