Assuming that the co-existence agreement is binding, it can sometimes be unenforceable. This can occur in the rare event where the agreement is seen as a disguised attempt to divide the market or curb trade, thereby reducing competition. When a co-existence agreement is intended to cover countries other than the United Kingdom, it can extend to countries where such agreements are treated with suspicion, if they create a degree of confusion for consumers, by allowing two different companies with similar names to continue their exchanges. In such cases, professional advice may be required. A trademark agreement is usually a simple contract by which a party agrees to authorize the use and/or registration of a trademark that overlaps with another party. The parties also state that their brands are not confusing to consumers. Often, this type of agreement is used when a company has received or is anticipating a refusal to register by the USPTO (U.S. Patent and Trademark Office). Despite the co-existence agreement, costly disputes were not avoided in this case.
As with all agreements, it is therefore desirable to include a dispute resolution clause in the event of future problems. THE WIPO Mediation and Arbitration Centre provides some useful examples of these clauses3. Tagged with: #trademarktuesday, co-existence agreements, consent A formal agreement on trademark coexistence recognizes the rights of both parties to use the trademarks contained in the agreement for marketing purposes. The agreement may include a breakdown of the regions in which companies using contracting parties can use the trademark, the methods in which the mark can be used or the categories of products and services for which the trademark can be used (in conjunction with the Madrid system for international trademark registration). [2] Talk to a lawyer and make sure you understand all the effects of entering into a co-existence agreement before you sign. In particular, if you have been contacted by another company that wishes your consent to register a similar trademark, you should help a professional decide whether this is really in your best interest. A good proposition is that, when the agreement is signed, the parties will water down a date when they will talk to each other.
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