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Tuesday, 18 March 2008

INTA Grapevine Symposium report 5

For the 120 or so participants in INTA's Advanced Symposium, the dawn of a new day over Dallas meant just one thing: the eagerly-anticipated session on co-existence agreements, "Can we live together?". This session, moderated by Belinda Berman (United States Golf Association), was powered by speakers Cynthia Rowden (Bereskin & Parr, Canada), David Stone (Howrey) and Ruby A. Zefo (Intel).

Right: the panellists, busily practising the subtle art of living together in the full glare of public scrutiny, which is also the fate of trade mark owners

Cynthia Rowden began by posing some typical "what do you do?" scenarios that bring marks in conflict with one another. Some arise from administrative proceedings, some from the use of the same mark by different businesses in different jurisdictions, others from convergence of business activities. The subject was then tossed between the panellists, who raised the sort of issues that trade mark attorneys prefer to avoid, such as whether a coexistence agreement or consent is seen as a no-compete deal that has antitrust implications. Cultural preferences are also important: in the US there is much less of a culture of consents than there is in Japan, or even in the European Union.

Ruby stressed the need for discretion when seeking a consent: the moment the name "Intel" is mentioned, anyone approached for a consent is apt to see dollar signs in the offing. David observed that the dynamic of consents has shifted in jurisdictions that have moved away from examining applications on relative grounds. An interesting exchange of experiences took place between Ruby, whose familiarity with consents is from the perspective of large companies seeking consent from smaller ones, and Ellen Shankman, looking at the position of little businesses seeking consents from big ones. In big-meets-little encounters, there are no prizes for guessing which has the greater leverage.

Next, David tackled the role of coexistence on the internet. In pre-internet days, users of the same or similar marks in different countries came across each other relatively infrequently: what happened in Australia, for example, was unlikely to have an impact in the US. The internet and domain name use has changed this: "we are all in each others' back pockets", he said, citing the famous WWF dispute as a case in point.

Other issues bandied around included dispute resolution provisions, the proper subject-matter for coexistence agreements (should it embrace such issue as the use of a trade mark in parody, for instance?) and the risks of binding arbitrations in juridictions other than China and Russia. David also raised the remarkable facts of the Diddy dispute (discussed here on the IPKat), which followed a coexistence agreement that didn't actually involve any registered trade marks at all.

Says the IPKat:

* thinking of three disputes over co-existence: WWF/WWF, Apple Computers/Apple Corp and Prudential/Prudential, in each of these instances litigation broke out after an agreement was made which the European party believed to be a coexistence agreement but the US party did not.

* options for resolving disputes range from out-and-out litigation at one extreme and acquiescence at the other, with the negotiation of coexistence agreements somewhere in the middle. It cannot be emphasised sufficiently that the decision as to which of these options a business should go for is a business decision, not a legal one -- though it must obviously be guided by legal considerations. Getting the right balance is a crucial element of any successful client-attorney relationship;

* little attention and resources are devoted to post-agreement policing of co-existence agreements, particularly following demergers. Complacency should not be allowed to be the determinant factor in deciding whether to keep an eye on post-agreement developments. The panellists emphasised that this was as much a matter of good record-keeping, since details of a coexistence agreement that cannot be found are unlikely to be enforced.

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