Coexistence Agreement Intellectual Property

Co-existence agreements can offer legal opportunities and economic benefits that, in appropriate circumstances, could be useful to trademark owners and consumers concerned. However, it is essential that it is skilfully designed to avoid future conflicts. Co-existence agreements can be effective instruments for resolving trademark disputes, but parties interested in the use of such an instrument should accept, in agreement with brand lawyers, the effects of the use of such agreements on their activities before committing to participate in such an agreement. The process of selecting a brand should be carried out with caution and foresight, carry out as complete a search as possible, preferably with the help of a specialist. If, despite these efforts, a conflict with the same or similar brand in the market is created, then a co-existence agreement may be less costly than a legal confrontation. This is not to say that it is always better to capitulate and accept a coexistence in the face of litigation, but in some situations, litigation may be the only appropriate response. It is up to the trademark holders to assess, in all cases, what would be appropriate given their particular circumstances. If the old registered trademark is known and the use and registration of the subsequent trademark can easily create confusion, trademark cohabitation is not permitted. If the trademark subsequently was actually used and has some popularity using it and if the consumer can distinguish it from the older registered trademark because of its popularity, coexistence may be allowed.

If both brands are both known and unknown, the standard will focus on brand similarity and product kinship, as described above. The purpose of a brand co-existence agreement is that brands are often used in “good faith” by several companies. The lack of formal agreement does not affect a company that uses the brand, as it is present in different regions of the world. However, with business growth, overlaps can develop and both parties may have significant rights to the use of the trademark. In some cases, companies that extend and use the same brand or similar brand generally enter into a co-existence agreement to avoid the use of the trademark in an undesirable or hurtful manner. Co-existence agreements can provide practical solutions to companies that are concerned about being sued for trademark infringement, as proactive agreements can avoid the high cost of litigation. [1] In this way, both parties remain aware of the co-existence and potential problems that may arise if they do not respect the conditions to which they have agreed to negotiate. Co-existence agreements work in the same way as approval agreements in relation to the weight they have given to the USPTO.

The more detailed and restrictive the agreement, the more likely it is that the USPTO will maintain its validity and authorize the simultaneous use of trademarks. However, customer confusion can still invalidate an otherwise legitimate agreement, particularly in areas closely related to the public interest, such as public health.B. In addition to the USPTO`s assessment of co-existence agreements, it is likely that the courts will enter into a co-existence agreement that would have negative effects on competition in the market or be contrary to antitrust rules. Prior to this case, TRAB and the courts did not accept co-existence agreements for high-level similarity marks and closely related products. As a result of this case, although TRAB still has a relatively conservative attitude towards these trademarks, the acceptance of the courts has increased since 2017, which is good news for applicants who wish to use co-existence agreements in litigation.