What is a co-existence agreement?
When registering a trade mark, if you are trying to register a mark which has already been registered in a similar class of goods and services, it is very likely you will not succeed.
If you were to register a trade mark which is similar to an existing trade mark, the owner will receive a notification of your application and is likely to file an opposition. This may spell the end of your application.
However, there is a circumstance where all parties can be happy, through a co-existence agreement.
A co-existence agreement is between the existing trade mark owner and the applicant, in which the applicant promises to only use the mark in respect of a certain number of goods and services. This is to prevent any confusion between the two marks and two businesses. If a co-existence agreement is properly created and agreed to by both parties, so as long as it is followed, there should be no disputes between you and the existing trade mark owner.
If you want to pursue this, it would be up to you to approach the existing trade mark owner to make it known to them you won’t be trading in relation to the goods and services they provide and therefore you agree to conduct business differently to them.
The ball is then in their court to decide whether they want to accept your proposal and therefore agree not to take action against your application or they may refuse your offer and proceed with an opposition.
You cannot force them to agree to your co-existence agreement therefore, it is not guaranteed that this will prevent an opposition being filed again your application.
While this may seem a simple solution to the problem, you must be clear of its consequences before you agree to it. You are basically agreeing to never expand into certain areas in the whole time you are using the trade mark. It is very important you consider the future and be completely sure that this is not an avenue you might want to pursue later on.
Co-existence agreements are not an exact science therefore it is best to always use The Trademarkroom’s expertise if this is something you want to pursue.
For more information, contact firstname.lastname@example.org or phone the office on 02380 000190
By Ellis Sweetenham