Contractual Freedom is a theme that permeates all legal relationships, being no different with industrial property. Contractual Freedom is, by concept, the ability of the parties involved in a contract or, also, in a conflict, to define conditions of the agreement freely and voluntarily, provided that these do not violate the law or public order. The application of Contractual Freedom allows the parties to negotiate the terms and conditions of a contract according to their own needs and interests. One of the characteristics of Contractual Freedom, which will be explored in this article, is the freedom of choice the parties have, to choose whether to formulate agreements in conflicts involving industrial property, more specifically, in trademark conflicts.

Contractual Freedom in the context of industrial property can be exercised in a number of ways. A very common example is the licensing of the use of a trademark, when there is the possibility of defining the conditions under which the licensee may use the trademark – territory, term, consumer market and financial terms – as long as there is agreement between the two parts about the topics treated. The focus, on the other hand, is on the application of contractual freedom in trademark conflicts, especially in the administrative sphere, seeking to understand how the institute is applied and what are the limitations within the scope of the INPI – National Institute of Industrial Property.

When there is a trademark conflict, still in the process of filing an application for registration, the most common administrative litigation is the filing of an Opposition, with arguments of violation of the right of previous use of a trademark sign. Without diminishing the importance and the need to file an Opposition in several cases, there is the secondary possibility of opting for the compositional route of the legal relationship and, thus, signing an agreement for the coexistence of trademarks between the owners, establishing limits and performance of each player in the market. The Coexistence Agreements are subsidiary elements to the examination of the application for registration of a trademark, being additional elements for the formation of the conviction as to the registrability of a trademark sign. And it is precisely because it is a gateway to fruitful negotiation between two companies that the coexistence agreement should be explored more often. If there is the possibility of extrajudicially composing with another company, technically competing, it opens up the possibility for the owner of the previous trademark to establish limits of action of owner with similar trademark, proposing to accept the coexistence between the signs, provided that the competitor undertakes to follow the limits proposed in the agreement. It is also possible to establish penal clauses for non-compliance with the agreement, which could lead to compensation to the holder.

The PTO's own Trademark Manual recognizes the possibility of having the coexistence agreement as an element of convincing the Examiner as to the possibility of confusion or undue association between the two records. And yet, the same Manual of Trademarks determines that even in the face of the existence of an agreement, if the coexistence of the analyzed signs is deemed impracticable, the Examiner may formulate a requirement to the applicant or to the holder of the previous right, in order to restrict the scope of the intended protection, so as to sufficiently remove the risk of confusion or undue association. Thus, even if the initial claim of the coexistence agreement does not materialize, it is possible for the INPI Examiner to request the restriction of activities under the terms of the proposed agreement, because it understands that, in that specific case, there would be no prejudice to the holder of the previous right.

The Contractual Freedom and, more specifically, the freedom to contract, is also verified in the possibility of signing an agreement of partial renunciation of trademark registration. This occurs when there are two registrations already granted that, perhaps, may collide in some specifications, but that the BPTO's Examiner previously understood by the possibility of coexistence between the records. The possibility of the parties involved to compose an agreement and present partial waiver of some specifications, restricting the scopes of action, to minimize the overlap of action, reduces the chance of subsequent conflicts, being a positive measure in the short and long term.

Finally, it is important, when discussing contractual freedom in Industrial Property, to remember that the BPTO has been making very positive changes in the format of registration and registration of contracts subject to the competence of the autarchy. The measures adopted by the BPTO in the last year aim to simplify the registration procedures, making them less bureaucratic to the applicant, recognizing the private autonomy of the contractors and, thus, reducing state interference in the agreements of individuals.

In short, contractual freedom plays a key role in the field of industrial property, allowing the parties involved to negotiate and establish agreements that meet their needs and interests. These forms of out-of-court composition provide opportunities for companies to resolve their disagreements collaboratively and avoid protracted litigation. In the dynamic and ever-evolving context of industrial property, freedom of contract remains an essential principle for promoting innovation and economic development.

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.