Coexistence Agreements: Yes Or No?

• Published date: 15 January 2024
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Havel & Partners s.r.o.
• Author: Tereza Hrab'kov', Lenka Brunclíkov' and Kateřina Trzaska

Coexistence agreements are one of the options that two owners of similar or identical trademarks have in a situation where they want to agree on how to (co-)exist together not only on the market but also in trademark registers. But can you really be sure that a coexistence agreement gives you a guarantee that your trademark rights will not be contested by the other party? The answer can be found in this article.

Have you ever thought about registering a trademark? If so, before filing a trademark application, you probably did research whether any similar or even identical trademarks for similar or identical goods and services have already been registered. As there has been a growing trend in the number of trademarks for many years, it is becoming increasingly difficult to choose a trademark that is unique to such an extent that it does not cause conflict with the owners of other already registered trademarks.

One solution to the conflict is to enter into a coexistence agreement with the owner of the earlier trademark.

The importance of coexistence agreements

As their name suggests, coexistence agreements are agreements that govern the coexistence or parallel existence of trademarks side by side, even when they are similar or even identical.

These types of agreements often contain the definition of the territory for the use of the conflicting trademarks, the specification for which goods and services a given trademark can be used and applied for in the future, or the specification of other mutual rights and obligations of the owners of the conflicting trademarks. One of the advantages can be the obligation of one or both parties to refrain from contesting the trademark rights of the other party, whether in relation to use or a new registration.

Coexistence agreements could look like a dream concept, but...

...the Office has thrown a spanner in the works

In its recent decision, the European Union Intellectual Property Office ("EUIPO") analysed coexistence agreements in relative detail. It involved a case where a company had opposed the registration of a trademark it considered similar to its earlier mark.

In the case, the applicant argued that, under a coexistence agreement entered into between the applicant and the opponent, in which both agreed not to contest their rights, the opponent was obliged to refrain from encroaching upon the applicant's right to file an application and use the mark applied for (even though the mark applied for was similar). The...