Trade Mark Co-Existence Agreement

“Polo. The car with the hole by Ralph Lauren.”

Trade Marks often co-exist peacefully and without confusion when they are used for different types of goods and services. In the example above, there will be no confusion and, most likely, no future trouble. Volkswagen are unlikely to produce sweets in the near future, Ralph Lauren is unlikely to start car production, and it is difficult to envisage a market for Nestlé’s minty-fresh clothing line – particularly with holes.

Other cases are not so clear-cut. Similar trade marks may cause confusion among consumers. Business strategy amongst those with similar marks may also have the potential for such confusion in the future. Businesses may not, at first, be in the same market or sector; however growth can bring overlap.

Where there is a risk of confusion, trade mark owners can hope for the best and do nothing; they can take legal action either by opposing the other’s trade mark application or allowing the trade mark to be registered and then seeking an injunction; or they can come to an agreement on how to co-exist.

This Trade Mark Co-Existence Agreement is designed for use in such situations and provides certainty and safety in situations which may otherwise hold the potential for trade mark infringement or passing-off actions.

Under the terms of this agreement, a party with an established (and usually registered) trade mark enters into a series of mutual undertakings with a party that is seeking to establish a new trade mark which will permit both parties to continue using their trade marks. In certain cases, the established party may require limited alterations to the classes of goods and/or services for which the newer party wishes to use their trade mark, thus preventing unreasonable overlap and the potential for confusion.

It is important to maintain a balance of undertakings when using this contract. As no money changes hands, the contractual consideration for this contract (which is a legal requirement to ensure that it is legally binding) is the mutual undertakings and promises contained within. Care should be taken to avoid a one-sided result.

Optional phrases / clauses are enclosed in square brackets. These should be read carefully and selected so as to be compatible with one another. Unused options should be removed from the document.

This Trade Mark Co-Existence Agreement contains the following clauses:

1. Definitions and Interpretation
2. Assertion and Acknowledgement of Prior Rights
3. Consideration
4. Party 1 Undertakings and Trade Mark Use
5. Party 2 Undertakings and Trade Mark Use
6. Assistance and Dispute Resolution
7. Mutual Undertakings and Understandings
8. Warranties
9. Indemnity
10. Confidentiality
11. Term and Termination
12. Notice
13. Force Majeure
14. No Waiver
15. Severance
16. Entire Agreement
17. Law and Jurisdiction

And the following schedules:

1. Party 1’s Prior Trade Mark
2. Party 2’s New Trade Mark
3. Required Modifications to Party 2’s Trade Mark Application

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