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Agreements of Coexistence in Trademark Law: Negotiating and Drafting

Home > Intellectual Property in France | Published 2015-07-07

Brands today are key components of a business’ image and values. Therefore, it is essential to protect it well. What happens when more than one similar mark exists? Is pursuing charges of infringement the only course of action? This requires strong legal arguments to convince the judge of infringement. There is, however, an alternative: coexistence agreements. The Picovschi law firm, experienced in intellectual property law and having helped clients through many trademark situations, is here to explain your options.

What is a brand?

A brand is defined as a sign capable of graphic representation that allows consumers to identify and distinguish the product from competitors’ products. Trademarks are filed with the INPI for a period of ten years, which can be renewed indefinitely. 

In practice, however, filing for a trademark does not always solve every problem. Difficulties could arise when a trademark is filed if the business has already started to operate or if the mark looks like one already in existed and owned. The resemblance could be phonetic or graphic.

There is, therefore, a risk of infringement, which, if successful, would negate and destroy the efforts to develop a profitable brand.

Agreements of coexistence: a solution if marks are similar?

In the context of globalization and the rise of trademarks, the likelihood of brands and marks being similar is increasing.

There is a legal solution for this type of situation. The risk of litigation can be reduced or eliminated by signing “coexistence agreements”.

This type of contract allows owners of similar trademarks to organize amicable coexistence. The objective is simple: to ensure the economic development of each of the parties in a just and fair way.

These coexistence agreements must be established with great vigilance. Writing carefully can help you avoid possible infringement. In this context, an intellectual property lawyer’s counsel is invaluable.

The lawyer’s role in coexistence agreements

The lawyer has several objectives.

First, he or she will identify the commercial aims of the corporate parties. To do this, a thorough study should be conducted on the products each company develops, as well as the methods of distribution. Then, the lawyer will assess the content in which the signs, name, and slogans are likely to coexist well.

Based on this research, the lawyer will negotiate freedom of action for each party.

The lawyer’s job is obviously to avoid possible conflicts, but in addition, the lawyer should anticipate them.

The agreement should include a provisional clause for arbitration in case of dispute, so that bringing the case before a judge is considered a last resort

Whether in the stage of negotiations, at the stage of drafting the agreement, or even in the case of litigation, the Picovschi law firm will put its vast experience in intellectual property law at your disposal.

This article is available online for public information purposes. It is updated regularly, as needed. Due to the constant evolution of the laws and the legal system, we cannot guarantee that the information in this article is still applicable. We invite you to contact us with any legal questions or concerns you have regarding this topic at +33 1 56 79 11 00. In no way can this firm be held liable for articles that contain inaccuracies or are now out of date.

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