Coexistence agreements for trade mark owners.
Coexistence agreements can be used to settle or avoid disputes where two parties wish to use similar marks for similar goods and services.
If registration of a trademark is legitimately opposed, it is worth considering whether the opposing party would be willing to enter into a coexistence agreement so that both marks can exist side by side. Agreeing to coexist can help to save the need for expensive litigation and can help each brand to specify what each mark is intended to cover which can help improve their functioning and ability to enforce against other infringers in the future.
It is important that the coexistence agreement does not unduly restrict a party’s future commercial activities. Parties should consider:
- the nature of rights: confirm the classes of goods and services for which relevant marks will be used by the parties. To what extent will either party be entitled or required to modify the mark and who will own which marks and whether the parties will need to make express statements on their websites or advertisements to stop the risk of consumer confusion;
- scope of use: confirm to what extent there will be any agreement to use marks in different sectors, territories, online or offline contexts or for keyword advertising;
- consideration: confirm what, if any, consideration will be payable under the agreement
- planning for the future: ensure that the terms of the agreement will not adversely affect any future plans for the business, including expansion of product lines;
- option to acquire: set out whether there is an option to acquire another’s trademark upon some event occurring in the future.
twitterlinkedininstagramInsight below, from our Dominic Davidson, takes a look at the temporary amendment to the law on executing wills during the COVID pandemic. The UK's common law system is a dynamic one and it is vital for Parliament, and in turn Judges, to be...
twitterlinkedininstagramUK Trade Mark Holders required to have a UK registered service address. From 1st January 2021, UK Trade Mark Holders are required to have a UK registered service address. EU registered addresses are no longer allowed. Ai Law provides a...
twitterlinkedininstagramA limited company is an incorporated entity. It has legal fiction, meaning in the eyes of the law, it is for all intents and purposes a natural person. Of course, the separate legal entity does not have arms or legs or a mouth, and so it needs...
twitterlinkedininstagramThe European Data Protection Board (EDPB) has made its first binding decision over a fine against Twitter for breach of GDPR by Twitter pursuant to its powers under Article 65 of GDPR in its "Decision 01/2020 on the dispute arisen on the draft...
Click the follow button below or on an icon above to view our other social media profiles.
This information is in no way to be taken as legal advice or tax advice. It is for information purposes only and is in no way to be relied upon. You should always seek the appropriate professional legal advice before attempting to act on any of the information given here.Go back to previous page
Contact Us Here
To find out more or discuss anything that you have read, please contact us below.
+44(0) 151 294 4722
8 WATER STREET LIVERPOOL L2 8TD
Other News and Insights
Ai Law is a trading name of the Ai Law Group, a recognised body law practice, regulated by SRA (SRA No.,: 670155). Registered office: Ai Law, 8 Water Street, Liverpool, L2 8TD, UK. We use the word 'partner' to mean a senior manager or consultant, or a shareholder. Ai Change Management is a connected company and part of the Ai Law Group. Our regulatory body: www.sra.org.uk