Sharing is Caring: Trademark Co-Existence Agreements

If you face a situation where you must reach a mutual understanding with another company because of shared or identical trademarks, trade names, or other intellectual property (“IP”), and you wish to ensure that neither party infringes upon the rights or disrupts business operations of the other, we have a solution for you. A Trademark Co-Existence Agreement may be right for you and your business. Co-Existence Agreements can be quite beneficial and tailored to your company’s needs. They help companies protect their IP, avoid litigation, and preserve positive business relationships.

 

Co-Existence Agreements are legal contracts between two parties that allow both parties to use similar or identical trademarks, trade names, or other IP without infringing on each other’s rights or business operations. The purpose of a Co-Existence Agreement is for both parties to protect their IP rights while simultaneously allowing them to continue using their IP for marketing or other purposes without infringing on the other party’s rights. Further, by setting out the terms of the Agreement, both parties can avoid the fees and risks of litigation. Additionally, Co-Existence Agreements are beneficial when two parties have established brands or businesses they do not want to change.

 

Co-Existence Agreements can be utilized when two companies, who hold similar or identical trademarks or brand names in the same geographic area, wish to continue using them simultaneously. Further, Co-Existence Agreements can clarify the class of goods and services that companies may use a trademark for. Generally, the practice of two companies using similar trademarks is not ideal, as it can confuse customers regarding the two parties’ IP and harm both companies’ reputations. However, in a situation where both parties wish to continue using trademarks or brand names, they can create a Co-Existence Agreement to minimize customer confusion and ensure the ability for consumers to distinguish between the two companies’ parties.

 

Another situation where Co-Existence Agreements can be useful is when a new company wishes to use the same or similar trademarks to an existing company. In this situation, the established company, to mitigate harmful outcomes that can arise from sharing the same or similar trademarks with a new company, can utilize a Co-Existence Agreement and outline specific limitations and restrictions it would like to place on the new company that is entering the market with the similar trademark.

 

A Co-Existence Agreement can benefit both companies in the following ways. First, a company can place restrictions and limitations on the other company through this Agreement. An example of how they can do this is by including a provision requiring the other party to change its trademark or trade name to avoid marketplace confusion with the IP belonging to the other company in the Agreement. Next, both parties can agree to limit the use of their trademark(s) in specific geographic areas or within certain product categories. Additionally, another provision often found in Co-Existence Agreements requires both parties to agree not to challenge each other’s IP rights. This provision is helpful as it helps to prevent one party from changing the legitimacy of the other party’s potential IP rights in the future. Further, Co-Existence Agreements can be used to establish business relationships between two parties when they cross license their IP.

 

In Israel, the law that governs Trademark Co-Existence Agreements is the Trademarks Ordinance of 1972. According to this law, anyone can file an opposition to any trademark registration. Often, the one filing an opposition is a competitor operating in the same market as the new company. The Registrar of Trademarks in Israel is responsible for registering and administering trademarks and has the complete authority to approve or reject Co-Existence Agreements. There are many factors that the Registrar considers when considering approval of a Co-Existence Agreement.

 

We have experience drafting Trademark Co-Existence Agreements and offer legal services relating to such contracts. As one of the top law offices in Israel (DUNS 100 and BDI Code Ranked), we are eager to assist you with all your legal matters and supply you with the best-in-market innovative legal solutions and business consultancy services.