A trademark coexistence agreement should clearly contain the following elements: all parties to the agreement, the indicated trademarks or logos that must coexist, an understanding of the domain names used by each party, a list of areas and geographical areas in which trademarks or logos are not permitted, and all relevant plans for business expansion. In addition, the coexistence agreement should contain the start and end date of the agreement, a clause defining the competence of the agreement and a dispute settlement clause. However, this case proved to be atypical, as the lawyer in charge of this case rejected the insufficient consent agreement. Specifically, it considers that the provisions on the manner in which the parties may grant their respective marks are not very valid, in particular because the registrations themselves do not contain such restrictions. Examination Counsel also found that the geographical restrictions of the consent agreement were ineffective, as the parties agreed that the registrant could use its trademark in the applicant`s territory. First, this consent agreement was found to be insufficient because “the parties have agreed to allow the use of their respective marks in the same areas, and the registrant will be free to use his mark throughout the territory of the applicant”. However, the applicant “is not aiming for a simultaneous registration (with a corresponding geographical restriction when registering the registrant) but for a national registration. [1] Nor does the applicant apply for a limited geographical registration as part of the consideration granted to the registrant for the conclusion of a consent 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 formal agreement on the coexistence of trademarks recognizes the rights of both parties to use the marks contained in the agreement for commercial purposes. The agreement may include a breakdown of the regions in which the parties to the agreement are allowed to use the mark, the methods for the use of the mark or the categories of goods and services for which the mark may be used (in conjunction with the international trademark registration system). [2] The USPTO`s determination of likelihood of confusion is based on an analysis of all evidence relevant to the factors set out in E. I. du Pont de Nemours &Co., 476 F.2d 1357 (CCPA 1973). The main factors of the Bridge are the similarities between brands and similarities between goods and services. However, the existence of a valid consent agreement between an applicant and the proprietor of the previously registered trade mark has always been considered very relevant in this context. See Trademark Manual of Examination Procedure (“TMEP”) § 1207.01 (d) (viii).

As stated by the Pont Customs and Patent Complaints Tribunal, a trademark coexistence agreement is an agreement between two parties to use a similar trademark for marketing purposes without entering the 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] The coexistence agreement must be signed by the owner of the earlier trademark and the applicant for the subsequently filed trademark….

Comments are closed.