The Superior Court of Justice (STJ) reaffirms that a cohabitation agreement does not bind the National Institute of Industrial Property (INPI) in its trademark registration analysis.

In the judgment of REsp 2.228.345, the 4th Panel of the Superior Court of Justice (STJ) confirmed that the existence of a coexistence agreement between holders of similar trademarks does not, in itself, prevent the rejection of a registration request by the National Institute of Industrial Property (INPI). The Court upheld the agency's refusal in a case involving medical-hospital products and reaffirmed that, in the registrability examination, the possibility of confusion or undue association by the consuming public remains a central element.

The most relevant technical aspect of the precedent lies in the reaffirmation of the public function of the trademark system. The Court made it clear that the INPI's analysis is not subordinate to the agreement between private agents when there is a risk of market conflict. Thus, coexistence agreements may have contractual and strategic utility, but they do not eliminate the agency's duty to examine the application in light of the Industrial Property Law and consumer protection.

The decision also reinforces that proof of actual confusion is not necessary to justify the refusal of registration. It is sufficient to ascertain a potential risk of undue association, considering the affinity between the products, the market context, and the distinctiveness of the disputed trademarks. This is, therefore, a preventive approach, aimed at avoiding competitive conflicts and protecting the secure identification of the company's origin.

The precedent reinforces the importance of prior technical assessment regarding prior art, risk of conflict, and the feasibility of trademark coexistence. The case also demonstrates that private settlement agreements between trademark holders do not replace the INPI's regulatory analysis nor do they, by themselves, eliminate obstacles to trademark registration approval.