A co-existence agreement allows businesses to trade using the same (or similar) mark, but with certain agreed restrictions, such as geographical constraints where a mark can be used. For example - one party may be able to sell under the mark in
The recent case of
Background
Merck Global was founded in 1688 in
Infringement
Merck Global claimed that online and offline uses of 'Merck' in the
The judge found that Merck US' use of the mark on websites, email addresses and social media targeted at the
How can a business get this right?
Ensuring that a co-existence agreement will adequately deal with every eventuality that may arise in the future is obviously impossible. However, the co-existence agreement in this instance appeared to be very simple and had not been updated since 1970 (and consequently could never deal with issues such as whether use on social media constituted infringement). Parties to such an agreement should therefore think about the following;
- What effect could rapidly evolving technology have on the use of a mark in future. Could this widen the use of a mark, sometimes inadvertently beyond the scope of what was originally intended?
- Where do you realistically intend to sell products? Basing an agreement on current markets and ignoring potential markets could cause problems down the line.
- Include adequate dispute resolution processes (for example a requirement to mediate a dispute) in order to hopefully avoid costly and lengthy litigation.
- Given this case and the effects of the internet and other technology, it may be worthwhile introducing requirements for the agreement to be reviewed (for example every ten years) to make sure it adequately provides for such advancements or changes to the parties' businesses
- Don't just consider geography - consider all elements of hard copy and electronic use including social media, websites, physical marketing brochures and other advertising materials.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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