Trade Mark Co-Existence Agreements

In circumstances where the two independent Intellectual Property Rights owners agree not to litigate (alleging trade mark infringement and/or passing off) and they agree that one party does not need to ‘re-brand’, then commercially it may be that the Parties enter into a Trade Mark Co-Existing Agreement in order to enable their respective Marks to ‘live side by side’.

A Trade Mark Co-Existing Agreement is a binding agreement (within UK jurisdiction as the Marks are territorial and secured within the UK) which confirms the parameters upon which the two Marks may ‘co-exist’ but do so, without any dilution to either Mark’s rights. It also establishes acceptable commercial boundaries of promotion and marketing in order to minimise the extent to which confusion may otherwise arise in the marketplace.

There are many potential benefits of negotiating a Trade Mark Co-Existence Agreement as opposed to engaging in litigation. These include, but are not limited to:

• It can be used as a means of resolving any dispute between the Parties (whether that dispute is in the UKIPO as opposition, cancellation or revocation proceedings, or in the Intellectual Property Enterprise Court) in a more cost-effective manner,
• It can be relied upon as evidence at the UKIPO, where the UKIPO has assessed that there may be confusion between the Marks, thereby enabling an application to proceed to registration,
• It can obviate the need for a Party to incur the associated costs of an entire rebranding,
• Importantly, it can provide certainty. The certainty arises where the Parties have clear direction as to what can and cannot happen in respect of the two Marks.

The Trade Mark Co-Existence Agreement will set out various matters often including the following:

• the identification of the Marks (i.e. how they are represented and whether any specific colours, text, representations are claimed),
• the geographical regions that the Marks can be used in,
• the markets that the Parties are entitled to enter,
• how the Marks are to be branded and used (in order to attract new customers and minimise the extent of any confusion that may otherwise exist between the Parties consumers)
• the distribution of the goods and/or services that may be utilised by the Mark.

 
In addition to this, the Co-Existence Agreement may also reflect that the Parties agree to not challenge each other’s Intellectual Property (whether those are existing or future rights) and how the expansion of the respective companies (including any sales) are to be dealt with.