At the national/regional level, trademark protection can be obtained through registration, by submitting an application for registration with the national/regional trademark office and paying the required fees.

At the international level, you have two options: either submit a trademark application to the trademark office of each country in which you seek protection.

Or contract with an international agency whose mission is to protect intellectual property and follow up on trademarks, where this institution registers the trademark with the competent international authorities.

In principle, trademark registration grants an exclusive right to use the registered trademark. This means that the trademark can be used exclusively by its owner, or licensed to another party for use in return for payment. Registration provides legal certainty and strengthens the right holder’s position, for example, in the event of litigation.

The duration of a trademark registration can vary, but is usually ten years.

It can be renewed indefinitely upon payment of an additional fee.

Trademark rights are private rights and protection is enforced through court orders.

A word or a combination of words, letters and numbers can form a trademark.

But trademarks can also consist of graphics, symbols or three-dimensional features such as the shape of goods and their packaging.

They can be invisible signs such as sounds, fragrances or shades of colour used as distinctive features – the possibilities are almost endless.

Trademark coexistence describes a situation where two different businesses use a similar or identical trademark to market a product or service without necessarily interfering with each other’s business. This is not uncommon. Trademarks are often used within a limited geographic area or with a regional customer base. Almost every French town with a train station, for example, has its own buffet restaurant. Trademarks are often formed from the family name of the person who started the business, and where this name is the common name, it is not uncommon to find similar businesses under the same or similar names. None of this leads to conflict or litigation, as long as the trademarks in question continue to perform their primary function, which is to distinguish the goods or services for which they are used from those of competitors. Problems start when this distinctive function no longer works because the businesses for which the trademarks were originally used begin to overlap. Thus, trademarks that once happily coexisted may suddenly come into conflict. This is particularly frustrating where both companies are using their similar trademarks in good faith – in other words, where they have a track record of genuine use of their trademarks, but due to business expansion begin to encroach on each other’s territory. In some cases, when two companies realize that they are using similar or identical trademarks, they may choose to enter into a formal coexistence agreement in order to prevent future use of the two marks from overlapping in a way that becomes undesirable or infringing. This article describes situations where coexistence may arise,

It should be emphasized that prevention is better – and cheaper – than cure. One of the most basic precautions when choosing and registering a new trademark is to conduct as thorough a search as possible, using professionals skilled in the task. A thorough trademark search should minimize the risk of a business coming face to face with a similar mark once on the market. But no search is infallible. Identical or confusingly similar trademarks may later be found if the search net is not cast wide enough, or if it does not include other classes of goods and services that may turn out to have an impact on the proposed mark. Likewise, the search may overlook unregistered marks, as well-known trademarks are protected in many countries even if they are not registered.

It often happens that two traders find themselves using the same or a similar trademark in relation to the same or similar goods in different parts of the world. They may remain unaware of each other’s existence for years until one of them expands the business and starts using the trademark or files a trademark application in the country where the other operates. 1 What happens next? At this stage, the trademark office may reject the application on the grounds that it conflicts with prior rights held by the other trader. The latter may also oppose the application during opposition proceedings, or file an action for invalidation after the mark has been registered.

The concept of “fair concurrent use” may apply in some common law jurisdictions. This takes into account the nature and duration of the use, the geographical area of ​​the trade, and the credibility of the adoption and subsequent use of the mark. A long period of concurrent use (at least five years) may help overcome opposition, and allow for the two marks to coexist. However, the finding of fair concurrent use depends on a number of factors, including the likelihood of consumer confusion. Thus, cases where both parties are granted registration, for example, a specific geographical area of ​​use for each company mark, appear to be the exception rather than the rule.

In a formal trademark coexistence agreement, the parties recognize the other party’s right to their mark and agree to the terms on which they may coexist in the market. This coexistence may be based on the division of territories in which each owner may operate, or on the definition of their respective areas of use, i.e. in relation to the goods or services on which they are used.

If a coexistence agreement is the best option, the first step is for the two companies to define their respective areas of operation and agree to abide by these criteria. But the real challenge lies in anticipating the future development of each company’s activities. Where would each company like to see itself in ten or twenty years? Will the expansion of each risk converging on each other’s territories?

The case of Apple Corps, the record label founded by the Beatles, and Apple Computer 2 illustrates the difficulties.

The two companies concluded a trademark coexistence agreement in 1991. This provided that Apple Computer would have the exclusive right to use its Apple trademarks “in or in connection with electronic goods, computer software, data processing and data transmission services”; While Apple Corps would have the exclusive right to use its Apple trademarks “in or in connection with any existing or future creative work in which the principal content is music and/or musical performances, regardless of the media in which those works are recorded, or communicated, whether tangible or intangible.” Thus, although the two companies had confusingly similar trademarks, they had identified an area in which they were distinct—namely, areas of use—and this became the basis of their coexistence agreement.

But neither company anticipated that the future development of digital music technology would bring the two fields closer together. When Apple Computers launched the iPod, iTunes, and the music store, Apple Corps filed suit, claiming that Apple Computers had encroached on Apple Corps’ exclusive territory, violating the trademark coexistence agreement. The court looked at the case from the consumer’s perspective and found that there was no breach of the agreement since the Apple Computers logo was used in connection with the software and not the music provided by the service. No user downloading music using iTunes would think they were interacting with Apple Corps.

Despite the coexistence agreement, costly lawsuits were not avoided in this case. As with all agreements, it is advisable to include a dispute resolution clause should problems arise in the future. The WIPO Mediation and Arbitration Center provides some useful examples of such clauses 3 .

Public Interest and Antitrust

An important question to consider before negotiating a coexistence agreement is the public interest. The court may invalidate the agreement if it considers that coexistence with similar brands in a particular case would be against the public interest. This may arise particularly in the public health field if two different medical products bear the same brand name – even if the companies operate in distinct geographic areas.

Companies should also be aware of competition and antitrust regulations: courts may find that their confusingly similar brands for similar products affect competition in the market.

The process of choosing a brand should be undertaken with caution and insight, with as thorough a search as possible, preferably with the help of a specialist. If, despite these efforts, a dispute arises with the same or similar brand in the market, a coexistence agreement may be less costly than a legal confrontation. While this does not mean that in the face of litigation it is always better to give in and agree to coexistence, litigation may be the only appropriate response in some cases. It is up to brand owners to judge in each case what the appropriate response is in light of their particular situation.