13 Apr Trademark Coexistence Agreement Termination
Often, a transaction or co-existence agreement is reached when a party has difficulty registering its trademark. When consenting to such registration, the parties should carefully consider whether consent should be extended only to the registration of competing trademarks or the use of those marks. If the parties agree to use, they do license under their own brands. This decision should not be taken lightly, especially if the agreement is reached only because a party is experiencing technical difficulties in obtaining a trademark. For example, “Bands-R-Us” could be both a company that sells alliances in California and a service that reserves jazz quartets in New York. Each company could have established rights to its brand, but it is potentially divided when it enters the other`s market. Co-existence agreements are contracts that attempt to resolve this type of potential brand disputes. They are generally designed to resolve a conflict or prevent a conflict from occurring. What goods and services are engraved for each game? Only the goods and services on which the party currently uses its trademarks? A broader category that covers areas that can move the party into the future? Here too, we recommend to be careful in extending the agreement to other goods and services than those with which each party is currently trading. In what area does the agreement apply? We recommend that this be taken into account in the negotiations at an early stage, as we have seen that negotiations have become difficult if one party changes the area late in the room. Also consider whether you should get advice on the spot if the agreement applies to a wide range of countries. For which marks does each party apply? How does it allow future changes and developments in these brands? Since settlement and co-existence agreements are generally permanent, you need to consider changes in each party`s trademarks over time. We recommend that you be careful when extending the agreement to other brands than those currently used by each party.
While negotiating, you should consider whether the terms of the transaction confer rights on competition or cartel issues. For example, the agreement contains conditions that: they must be clear and precise about the future uses and records of each party. Since billing/coexistence agreements are generally permanent, you need to think about the long-term impact of possible obligations. As noted above, a license to use is potentially a free indefinite license. There is always a risk in concluding a brand co-existence agreement. Perhaps in the future you would like to expand into new territories and markets and you will find limited by an agreement that you signed many years ago. A co-existence agreement may also restrict your right to transfer your trademark or your ability to enforce it. Finally, if the other company produces poor quality products or offers insufficient service, your own reputation could suffer. We have a team of commercial lawyers who understand the complexity of brand billing and co-existence agreements and provide useful, practical, accurate and timely technical advice.
If you need help negotiating a brand count or a co-existence agreement, contact one of our experts below.