What is a trade mark coexistence agreement?

A trade mark coexistence agreement is a  type of contract which is frequently used to settle and/or avoid disputes between two parties regarding their branding. The need for such an agreement most commonly occurs when one party applies for a trade mark which a second party views to be too similar to their prior rights.

How it works in practice

By way of an example, let’s say that I decide to apply for the trade mark BRIFFA in relation to legal services (before you ask, I have already done this). And let’s also say that you have an earlier trade mark for BRIFFA FINANCE in relation to financial services. You might be concerned that I’m applying for a similar mark in respect of similar services and you may, on that basis, threaten to oppose my application.

However, rather than going through a long and often expensive opposition procedure the parties in the above scenario would be well advised to consider a co-existence agreement. Under this agreement, the trade mark applicant could for example, agree to never use the word FINANCE in their branding, or never offer financial services. Both of these concessions are unlikely to be problematic for a law firm and yet they’ll offer a good amount of comfort to the holder of a similar mark.

What could a coexistence agreement contain

The primary clauses of a coexistence agreement are likely to reflect the undertakings or promises which the parties offer to each other. Typically these would be, from the applicant, in relation to some form of branding restrictions, and from the potential opponent, an agreement not to oppose the application.

Beyond the above coexistence agreements often include wider provisions about recognising the rights of one party or agreeing not to challenge those rights in the future, thereby preserving a longer term peace between the parties.

These agreements will also include a number of additional clauses covering issues such as confidentiality, costs, dispute resolution, governing law and jurisdiction.

How Briffa can help

If you’re concerned about a similar trade mark application, or if you have found a potential block to your planned trade mark application, get in touch. We can provide strategies to protect your existing rights and/or advice on how to secure new rights. Trade marks are significant commercial assets and they are always worth considering, no matter what sort of business you’re in.