Brazil’s Chamber of Deputies Industry, Trade and Services Committee has approved a proposal establishing criteria for the exceptional coexistence of identical or similar trademarks. The text would allow courts to authorize the simultaneous use of distinctive signs under specific circumstances, particularly where a sign has been used continuously and in good faith for an extended period without opposition from the registered trademark owner.
The measure is included in a substitute text to Bill 512/2025, originally introduced by Representative Jonas Donizette (PSB-SP) and revised by rapporteur Representative Lucas Ramos (PSB-PE).
The proposal would amend Brazil’s Industrial Property Law (Law No. 9,279/1996) and seeks to balance trademark owners’ rights with the preservation of established business activities. However, it maintains the precedence of registrations granted by the Brazilian Patent and Trademark Office (BPTO) and establishes specific conditions for any judicial authorization of coexistence.
What does the proposal provide for?
The approved substitute text maintains the principle that trademark ownership and exclusivity derive from BPTO registration. Its main development is the possibility for courts to authorize the coexistence of identical or similar distinctive signs in exceptional cases.
The proposal addresses situations in which a business has used a particular sign publicly, continuously, and in good faith for many years, without receiving formal opposition from the owner of a registered trademark during that period.
The objective is to provide a framework for resolving conflicts involving established business activities, particularly in local or regional markets, without undermining the rights arising from official trademark registration.
Importantly, judicial authorization would neither grant the user trademark ownership nor invalidate the existing BPTO registration. The court would also have to expressly define the territorial scope of coexistence, taking consumer protection and fair competition into account.
What are the five requirements for trademark coexistence?
Under the approved text, judicial authorization would depend on the cumulative demonstration of five requirements:
- Long-term use: continuous, public and good-faith use of the distinctive sign for at least ten years.
- Knowledge of the trademark owner: evidence that the registered trademark owner had unequivocal knowledge of the third party’s use.
- No formal opposition: absence of formal opposition from the registered owner throughout the ten years.
- No likelihood of confusion: absence of a relevant risk of consumer confusion, improper association or diversion of customers.
- Preservation of trademark value: absence of relevant harm to the registered trademark’s distinctiveness, reputation or economic value.
Because these requirements are cumulative, satisfying only some of them would not be sufficient to support the judicial authorization contemplated by the proposal.
The assessment would also need to consider the specific circumstances of each dispute, particularly the potential effects of coexistence on consumers and competition.
Why was the original bill revised?
The original version of Bill 512/2025 proposed recognizing the right to use a trademark when an entrepreneur had used it for an extended period without opposition from the registered owner.
Rapporteur Lucas Ramos identified potential legal certainty concerns with this approach. These included the possibility of weakening Brazil’s trademark registration system and creating conflicts with the country’s international commitments.
In Brazil, BPTO registration plays a central role in establishing trademark ownership. Automatically recognizing rights based on prolonged use could therefore create ownership uncertainty and increase litigation.
The substitute text addresses these concerns by preserving the exclusivity arising from registration while allowing courts to assess exceptional coexistence situations.
Accordingly, the proposal does not establish an automatic right to shared trademark use after ten years. Instead, it creates the possibility of judicial authorization, subject to proof of all the specified requirements.
What could the proposal mean for businesses and trademark owners?
If ultimately approved and enacted into law, the bill could introduce new parameters for assessing disputes involving similar trademarks.
For businesses that have used distinctive signs for many years, particularly in regional markets, the proposal could offer an alternative avenue to seek judicial authorization to continue those activities under specific circumstances.
For registered trademark owners, the text reinforces the importance of monitoring third-party use of similar signs and taking appropriate action when potential conflicts arise.
Key considerations include:
- Trademark monitoring: tracking new applications and uses of similar signs to identify potential conflicts.
- Evidence of use: maintaining records that demonstrate when trademark use began, its continuity, and the circumstances of that use.
- Conflict management: assessing situations involving potential confusion, improper association, or customer diversion.
- Intangible asset management: incorporating trademark protection into broader business strategies and efforts to preserve brand value.
Even if the proposal becomes law, coexistence would not be automatic. Each case would remain subject to judicial assessment and proof of the statutory requirements.
What are the next steps for the bill?
Bill 512/2025 follows the conclusive legislative procedure in the Chamber of Deputies. Following approval by the Industry, Trade and Services Committee, the text is expected to be reviewed by the Constitution and Justice Committee (CCJC).
If approved at that stage and no appeal is filed for consideration by the full Chamber, the bill may proceed to the Federal Senate.
To become law, it must be approved by both houses of Congress and complete the presidential sanction process.
