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Tuesday, 11 December 2007

Coexistence agreements

An applicant for a trade mark sometimes discovers that some other person has an earlier registered trade mark or unregistered right that bears at least some similarity to his mark to raise the question whether there might be some risk of confusion, either now or at a later time when both marks are better known. However, the applicant can sometimes reassure the holder of the earlier right that he poses no threat, because he proposes to use his mark on different goods or services, or in a way that is quite different from the manner of use of the earlier mark or right.

Right: the lion and the lamb, peacefully coexisting -- but trade mark users can do it too ...

A good way of protecting the interests of both parties is for them to enter a coexistence agreement, in which either or both of them define the parameters of their businesses and the uses to which they propose to limit the use of their mark so as not to trespass on the market or the business expectations of the other.

The IPKat is looking for inspiration and wonders if any of his readers can recommend or send him a good, workable template for a coexistence agreement, or let him have sight of an anonymised version of an actual coexistence agreement. If you can help, please send it here [there will be a follow-up post, discussing some interesting issues relating to coexistence agreements].


geeklawyer said...

Perhaps you could email Apple or the Beatles lawyers?

suboczcc said...

Co-existence agreements have been the subject of some controversy in Australia following the decision of Heerey J in Cadbury Schweppes and Darrell Lea Chocolates, where Heerey J took into account the evidence of co-existence agreements Cadbury Schweppes entered into when finding that Cadbury Schweppes had inconsistently enforced its (unregistered) rights in the colour purple.

His Honour's decision was overturned by the full Federal Court, but from memory the full Court didn't have much to say about his Honour's comments on the co-existence agreements.

Jeremy said...

Apple or Beatles? I'm sure you are having a little jest at their expense. Likewise WWF and WWF, and Prudential and Prudential. These are perfect examples of "how not to do it".

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