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
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
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
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
11. Term and Termination
13. Force Majeure
14. No Waiver
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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