We have a dedicated team of business lawyers who understand the complexities of comparing trademarks and coexistence agreements and can provide useful, practical, accurate and timely expert advice. If you need help negotiating a brand comparison or coexistence agreement, contact one of our experts below. Who should sign the agreement? These should be the parties that own the trademarks in question, but are there other users of the trademarks who must be bound by or benefit from the agreement? Should each party be required to ensure that its affiliates comply with the agreement? Does the consent given under the agreement extend to use by affiliates, licensees and franchisees? Under the contract law of any UK country, a coexistence agreement is generally binding if it consists of a serious promise made by each company in exchange for some form of benefit from the other. This reciprocity of advantage is lacking when one company simply agrees to allow the other to act under a particular name and receives nothing in return; in such cases, that company may withdraw its consent. For this reason, it is important to be able to show that both parties clearly benefit from the coexistence agreement. If you think this may not be the case, a brief consultation with a professional advisor will clarify the matter soon. The main purpose of a coexistence agreement is to establish rights and expectations between the two competing trademark owners, but there is also the purpose of avoiding confusion among consumers. A brand only works if it is associated with your product in the minds of consumers. If you decide to enter into a coexistence agreement, it is crucial that it is skillfully crafted. A court may reject a coexistence agreement if it does not contain sufficient detail to avoid confusion and if it considers that confusion among consumers is inevitable. In addition, many areas should be addressed in a coexistence agreement in order to avoid future conflicts. Some of these areas include: (1) who has the right to produce or expand the territory; (2) who has the right to the domain name or username on social media or variations of the trademark; (3) who has the right to license or assign the trademark; (5) who has the right to carry on international activities and to register international marks; (6) What happens if a party waives its rights? (7) What is the duration of the agreement? and (8) What happens if one party violates it, what facilities is the other party entitled to and in the event of a dispute, what jurisdiction will the parties use? When concluding an agreement on the coexistence of trademarks, the public interest must be taken into account. This is often true in situations where two medical companies carry the same brand for unique products, as it could cause confusion and have a serious impact on consumers.
Companies also need to consider antitrust regulations. Courts may conclude that similar marks may affect competition in the market. In our practice, we see many trademark comparison and coexistence agreements that are entered into, often when one party needs the consent of the other party to register its trademark. It is important to take into account, taking into account the immediate objective, the broader and long-term impact of the terms of the agreement on the activities of each party. In this article, we describe the main considerations we take into account when negotiating and drafting settlement and coexistence agreements for our clients. Over time, the California Associated Raisin Company changed its name to Sun-Maid Raisin Growers. This company filed for bankruptcy and acquired (and the « Sun-Maid » brand) a new property. In the 1930s, the new owners learned about the coexistence agreement and wanted to get out of it.
The new owners stated that they were a bona fide buyer without knowledge of the coexistence agreement and that they only bind the previous parties to the agreement. Dreyfus and its experts will assist you in the creation of an amicable coexistence agreement. To which brands of each party does the contract apply? How does it take into account the future changes and developments of these brands? Since settlement and coexistence agreements are generally perpetual, you should consider changes to each party`s trademarks over time. We recommend that you be careful when extending the agreement to trademarks other than those that each party currently uses. .