Trade Mark Co-existence - what is it and will it work?

Picture the scene, you have spent days, weeks or even months choosing the perfect brand name and after a few clearance searches you discover, to your horror, that someone else has already registered a similar mark… is all lost? Must you go back to the drawing board? Or is there a way in which you can still use the name?

The short answer is: maybe. Not no, or definitely not, but equally not yes, or at least not yet (I hate lawyers who can’t just answer straight questions).

Basically there’s a particular type of agreement used in trade marks disputes known as a “co-existence agreement”. It’s often entered into following an opposition or a threatened opposition to a trade mark application and it allows parties to agree a set of rules on which they’ll trade going forward.

The party with the earlier right is often the one imposing the rules but the upside for Johnny-come-lately is that, if they abide by the rules, the other party will allow them to register their mark. In fact, this is often a major advantage for the opposing party as they may not actually want to fight a full-blown opposition (not least because of the potential legal fees involved and the risk of losing).

So win win? Well yes, in theory, as long as both parties can actually find a way of differentiating their brands (and of course, providing they both agree). Typically this won’t work when the brand names are identical unless the goods/services are completely different. But, most of the time, it’s possible to identify differences in both the names and the goods/services.

Let’s consider a example: Party A has an earlier trade mark for BRIFFA in relation to the provision of legal services in class 45. Party B applies for BRIFFA BABIES in relation to the provision of babysitting services, which also happens to be in class 45.
Party A could oppose on the grounds that the whole of their mark is used in Party B’s mark and the same class has been specified. However, Party A doesn’t want to get embroiled in an opposition and decides that it has better things to do. Equally Party B is keen to point out that it has no intention of providing legal services in the future and really does just want to stick to the invaluable task of allowing parents a night off.

So the parties decide to enter into a co-existence agreement. Party B undertakes to never provide legal services, or any services which could be associated with these services (e.g. financial or insurance services) and promises that it will always include the word BABIES alongside any mention of BRIFFA.

Party A feels that this is sufficient to avoid confusion, it’s conscious of the fact that Party B will not compete with it and it feels that the word BABIES is clear enough to show consumers that Party B definitely isn’t offering legal services.

An agreement is drafted to this affect and Party B’s mark continues to registration.

Both parties can then continue to trade safe in the knowledge that a legal dispute has been avoided and they have a clear set of rules on which the can trade. Happy days.

Now, if anyone out there can recommend a good babysitter, my one-year old daughter will be happy to meet them – lawyers need not apply.

William Miles
Briffa, Intellectual Property and Information Technology Lawyers