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 Brazilian Patent & Trade
Mark Office (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.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.