Coexistence Agreement Intellectual Property


Coexistence agreements can offer legal opportunities and economic benefits that, in appropriate circumstances, could prove useful for the trade mark proprietors and consumers concerned. However, it is important that it is skillfully designed to avoid future conflicts. Coexistence agreements can be effective instruments for resolving trademark disputes, but parties interested in the use of such an instrument should consider the impact on their business with the use of such agreements, in consultation with trademark lawyers, before committing to participate in such an agreement. The USPTO considers many relevant factors and evidence before concluding whether a trademark should be registered. In situations where the USPTO believes that the trademark is likely to cause confusion between the consumer and a previously registered trademark, the USPTO will have significant weight for a consent agreement between the applicant and the trademark owner. However, the consent agreement should be sufficiently detailed and contain specific reasons and evidence why the parties concerned do not expect consumers to be confused and to take explicit measures to minimise them. “Naked” consent agreements (which contain only permission to register the trademark and a brief statement that confusion is unlikely) are far less convincing to the USPTO. Ultimately, even the most detailed consent agreement can be voided by a high risk of confusion due to extremely similar trademarks. The latest case is one of the intellectual property cases upheld by the Supreme People`s Court in 2016, which has a great influence on the examination of trademark coexistence agreements. The detailed information is as follows: the International Trademark Association (INTA) defines a trademark co-existing agreement as “an agreement of two or more persons so that similar marks can coexist without risk of confusion” and “allows the parties to define rules allowing trademarks to coexist peacefully”. In practice, in China, a trademark coexistence agreement often appears as an agreement signed by two (or more) parties or a declaration of consent that the owner of an earlier trademark registration has given to the applicant for a subsequently filed application. Although academia continues to argue over the validity of trademark coexistence agreements, the number of cases in which trademark declarants use trademark coexistence agreements to obtain trademark registration in administrative cases where trademark rights are granted and confirmed has gradually increased.

Applicants should be aware of this and apply it appropriately. We have listed some judgments of the Chinese People`s Courts regarding coexistence agreements as a reference. But neither company foresaw that the future development of digital music technologies would bring the two fields much closer together. When Apple Computers launched the iPod and the iTunes software and music store, Apple Corps filed a lawsuit claiming that Apple Computers was infiltrated into the enrichment reserved exclusively for Apple Corps, in violation of the brand`s coexistence agreement. The court considered the case from the consumer`s point of view and found that there was no breach of contract, given that the Apple Computers logo was used in connection with the software and not with the music provided by the service. No consumer who downloads music with iTunes software would think that it is interagulating with Apple Corps. If you don`t hire a lawyer, it may be helpful to start with a coexistence agreement from the bar in which you can fill in the gaps. We have provided a checklist in point 7 below. Coexistence agreements work in the same way as consent agreements in terms of the weight the USPTO gives them. .

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