Trademark Coexistence Agreement Model

Despite the coexistence agreement, costly litigation could not be avoided in this case. As in all agreements, it is therefore desirable to include a dispute settlement clause in case of future problems. The WIPO Mediation and Arbitration Center provides some useful examples of these clauses.3 Talk to a lawyer and make sure you understand all the effects of entering into a coexistence agreement before signing. In particular, if you have been approached by another company that wants to obtain your consent to register a similar trademark, ask a professional to help you decide if it is really in your best interest. The USPTO considers many relevant factors and evidence before concluding whether a trademark should be registered. In situations where the USPTO believes that the trademark is likely to cause confusion between the consumer and a previously registered trademark, the USPTO will have significant weight for a consent agreement between the applicant and the trademark owner. However, the consent agreement should be sufficiently detailed and contain specific reasons and evidence why the parties concerned do not expect consumers to be confused and to take explicit measures to minimise them. “Naked” consent agreements (which contain only permission to register the trademark and a brief statement that confusion is unlikely) are far less convincing to the USPTO. Ultimately, even the most detailed consent agreement can be voided by a high risk of confusion due to extremely similar trademarks. Problems start when this distinguishing function no longer works, because the companies for which the marks were originally used begin to overlap. Thus, brands that happily coexist can suddenly come into conflict. This is especially frustrating when both companies use their identical brands in good faith – in other words, if they both have a track record in the actual use of their respective brands, but start infiltrating each other`s territories due to business expansion. In some cases, if two companies know that they are using similar or identical marks, they may choose to enter into a formal coexistence agreement in order to prevent the future use of the two marks from overlapping in a way that becomes undesirable or hurtful.

This article describes the situations in which coexistence can occur and presents some points to consider when considering a coexistence agreement. The public interest must be taken into account when concluding a trademark coexistence agreement. This is often the case in situations, for example. B when two medical companies carry the same brand for unique products, as this could create confusion and have serious repercussions on consumers. Companies must also comply with anti-cartel rules. Courts may find that similar marks may affect competition in the market. A brand coexistence agreement is an agreement between two parties for a similar brand to be used for marketing purposes, without interfering with each other in each other`s businesses. Agreements of this type are often concluded, as the parties only request the regional use of their trademarks and, therefore, the use of a trademark by other companies does not harm their activities. Coexistence agreements can include designs, copyrights, and even patents. [Citation required] But neither company foresaw that the future development of digital music technologies would bring the two fields much closer together. When Apple Computers launched the iPod and the iTunes software and music store, Apple Corps filed a lawsuit claiming that Apple Computers was infiltrated into the enrichment reserved exclusively for Apple Corps, in violation of the brand`s coexistence agreement.

The court examined the case from the consumer`s point of view and found that there was no breach of contract, given that the Apple Computers logo was used in connection with the software and not with the music provided by the service. . . .