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This is a summary of a presentation given by Ian Gill to the International Federation of Intellectual Property Attorneys (FICPI) at their convention in St. Petersburg in October 2016.
Trade Marks co-exist in the marketplace and on Trade Mark Registers. There are a number of reasons why co-existence arises in the marketplace such as businesses expanding their range of goods and services or moving into new territories.
In relation to co-existence on the Trade Mark Registers, prior to the introduction of the EU trade mark system, the majority of the national Trade Mark Offices within the EU took steps to prevent the registration of conflicting rights (‘Relative Grounds’) – the Trade Mark Offices served as the ‘guardian of the public interest’ to prevent consumer confusion. However there has been a gradual move towards the national Trade Mark Offices leaving it to the owners of earlier rights to take action to stop conflicting applications and only 1/3rd of national EU Trade Mark Offices now raise objections based on the earlier rights of others. This transition has led to a quicker and cheaper registration process in straightforward cases but often leads to significantly increased costs later in the lifecycle of the registration. This transition also means that there are overlapping rights on the Trade Mark Registers as not all conflicting applications will be opposed by the owners of earlier rights.
*Poland – for applications filed on or after 15 May 2016
** The Slovak Office objects on the basis of earlier rights only to identified marks that are applied to identical and similar goods and services
It is often argued that if two marks co-exist in the marketplace and there is no evidence of actual confusion then there can be no infringement, but the Courts and the Trade Mark Offices take a different view:
“Absence of evidence of confusion is rarely significant, especially in a trade mark case where it may be due to differences extraneous to the plaintiff’s registered trade mark.” The European Limited v The Economist Newspaper Limited 
In situations where a conflict arises then it is not uncommon for the parties to reach some form of agreement to govern their future conduct. Looking at trade mark oppositions filed before the EU IPO, more than 2/3rds are concluded without a decision being issued, and the majority of these will involve some type of agreement between the parties.
The owners of trade mark registrations need to monitor the publication of new trade mark applications to ensure they are aware of conflicting applications and they can then take a view on whether to oppose or take further action. The monitoring of publications via a formal trade mark watch is highly recommended.
Co-existence agreements provide significant benefits, such as resolving conflicts and providing legal certainty for businesses going forwards, but careful consideration needs to be given to the terms of the agreement to ensure that consumers are not confused and the agreement does not inadvertently limit the scope of future expansion.
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