Overcoming Similarity Objections: Using Letters of Consent in Modern INPI Practice

When INPI identifies a conflict between a trade mark application and an earlier registration or pending application, the applicant faces a similarity objection that can block registration. One of the most practical tools for overcoming this obstacle is a coexistence agreement or letter of consent. Unlike some jurisdictions that took decades to accept these instruments, Brazil has a well-established practice of considering them during examination — but their acceptance is not automatic, and understanding the drafting requirements and examiner expectations is essential.

The Legal Basis

Brazil’s acceptance of coexistence agreements is grounded in INPI Technical Opinion No. 01/2012 (Parecer Técnico nº 01/2012), which formalised the practice of considering letters of consent and coexistence agreements as evidence relevant to the assessment of confusion risk under Article 124, XIX of the LPI. This provision prohibits the registration of marks that are identical or similar to an earlier mark for the same or related goods or services where there is a likelihood of confusion or association.

Under this framework, a coexistence agreement does not override the law — it provides INPI with evidence that the parties most directly affected by the potential coexistence have assessed the situation and concluded that no confusion will arise. INPI then evaluates this evidence alongside its own analysis.

Letter of Consent vs. Coexistence Agreement

Although the terms are often used interchangeably in practice, they serve different purposes:

• Letter of consent: A unilateral declaration by the owner of the earlier mark, addressed to INPI, consenting to the registration of the later mark. It is filed by the applicant as part of its response to an office action.
• Coexistence agreement: A bilateral contract between both parties establishing the terms under which their marks will coexist in the market. It typically covers mutual obligations, product differentiation, territorial scope, and dispute resolution mechanisms.

Either instrument can be submitted to INPI, but a bilateral coexistence agreement tends to carry greater weight because it demonstrates mutual commitment to avoiding confusion and provides INPI with a richer factual basis for its assessment.

INPI’s Assessment: Not a Rubber Stamp

A critical point that applicants must understand is that INPI retains discretion over whether to accept a coexistence agreement. The agreement is treated as evidence relevant to the confusion analysis, not as a binding instruction to the office. If INPI concludes that, despite the parties’ agreement, the coexistence of the marks would create a genuine risk of public confusion, it may:

• Issue an office action to the applicant, restricting the scope of the application to reduce the overlap with the earlier mark.
• Issue an office action to the registrant of the earlier mark, excluding the conflicting element from the scope of that registration, provided this is viable and preserves the mark’s distinctive character.
• Refuse the application outright, notwithstanding the agreement, if the risk of confusion is deemed too high.

This means that applicants should not treat a coexistence agreement as a guaranteed solution. It is a strong tool, but it must be supported by a convincing case that coexistence will not mislead consumers.

Drafting Requirements for Acceptance

INPI’s guidelines establish expectations for the content of coexistence agreements. A well-drafted document should include:

• Clear identification of both marks: The earlier registration (with number) and the pending application (with number) must be precisely identified.
• Express consent: An unambiguous statement that the earlier mark owner consents to the registration and use of the applicant’s mark.
• Joint assessment of confusion risk: A critical requirement is that the agreement should include the parties’ joint assessment that the coexistence of the marks will not create confusion among consumers. This is not merely a formality — INPI examiners look for this specific element as evidence that the parties have considered the public interest, not merely their private commercial interests.
• Specification of goods or services: The scope of the consent — which goods or services are covered — should be clearly stated.
• Signatory authority: The document must be signed by authorised representatives of both parties, with documented authority to bind the mark owners.

Formalities for Foreign Documents

If the coexistence agreement is executed outside Brazil, it must comply with the following requirements to be valid before INPI:

• Notarisation: The signatures must be notarised in the country of execution.
• Apostille or consular legalisation: If the country is a party to the Hague Apostille Convention, an apostille is required. Otherwise, consular legalisation is necessary.
• Sworn translation: The document must be translated into Portuguese by a sworn translator (“tradutor juramentado”) registered in Brazil.

These formalities add time and cost to the process, so applicants should begin preparing the agreement as soon as a potential conflict is identified.

The 2025 Restricted Opposition: Impact on Coexistence Strategy

The introduction of Portaria INPI/PR nº 36/2025 created a new “restricted opposition” mechanism limited to conflicts under Article 124, XIX (similarity with prior registered marks). This streamlined procedure is expected to increase the volume of opposition proceedings, making proactive coexistence strategies more important than ever. Brands that anticipate conflicts should consider approaching potential opponents early and securing coexistence agreements before opposition proceedings are initiated.

Strategic Recommendations

• Negotiate early: If a pre-filing search reveals a potential conflict, approach the earlier mark owner before filing. Having a coexistence agreement ready can prevent or swiftly resolve an office action.
• Include the joint confusion assessment: Ensure the agreement explicitly states that both parties have assessed the marks and concluded that no consumer confusion will arise. This is the single most important element for INPI acceptance.
• Differentiate where possible: If the marks are very close, consider visual, phonetic, or specification differences that strengthen the case for coexistence.
• Use bilateral agreements for stronger impact: Where possible, execute a full coexistence agreement rather than a unilateral letter of consent, as the mutual commitments provide INPI with greater assurance.
• Plan for formalities: If the agreement will be executed abroad, factor in time for notarisation, apostille, and sworn translation. These steps can take weeks.

Common Mistakes

• Assuming consent is automatic acceptance: INPI retains full discretion. Build a supporting case.
• Omitting the joint confusion assessment: Without this element, INPI may view the agreement as incomplete and give it less weight.
• Submitting an improperly formalised document: Agreements executed abroad that lack notarisation, apostille, or sworn translation will not be accepted.
• Waiting until the office action deadline: The response window is limited. Negotiate and prepare the agreement in advance.

Key Takeaway

Letters of consent and coexistence agreements are well-established and effective tools in Brazilian trade mark practice for overcoming similarity objections. However, they are evidence, not guarantees. INPI retains discretion to refuse registration if it determines that the coexistence of the marks would confuse consumers, regardless of the parties’ agreement. The most effective coexistence agreements are those that include a joint assessment of confusion risk, are properly formalised, and are supported by arguments demonstrating that the marks can coexist without misleading the public.