Is it possible to use a coexistence agreement to overcome a trademark refusal in Brazil?

During my practice as a trademark attorney, I have encountered this question several times, particularly from European attorneys. After studying the European trademark system, the reason behind the question became clearer. In Europe, to put it simply, the coexistence of trademarks is considered a private matter. What does this mean? It means that if two trademark owners agree that their trademarks can coexist and are comfortable with this arrangement, their agreement can be used to overcome a trademark rejection.

Brazil, on the other hand, adopts a system that regards trademarks as a matter of public interest. In other words, the coexistence of two similar trademarks can potentially confuse consumers, and for this reason, not every trademark coexistence agreement can be used to appeal a rejection.

During the examination process, the Brazilian Trademark and Patent Office analyzes whether there are any similar previous trademark applications or registrations for the same goods and services. If any are found, the trademark can be rejected regardless of opposition.

Following a rejection, the owner has 60 days to appeal. At this stage, some owners may attempt to contact the other party, particularly if no opposition was filed, as it may indicate that the owner is open to coexistence. Therefore, documenting the coexistence agreement provides an argument that the trademarks can indeed coexist, as the owner of the trademark registration would not have signed such an agreement otherwise.

However, as previously mentioned, the Brazilian system is founded on the principle of public interest. Consequently, if the examiner determines that the coexistence of both trademarks would confuse consumers, the rejection will be upheld, and the second trademark will not be registered.