Exploring Use of the Same Mark by Multiple Undertakings
Edited by IIanah Simon Fhima
Chapter 4: Coexistence in Community Trade Mark Disputes: When is it Recognized and What are its Implications?
Arnaud Folliard-Monguiral* 1. INTRODUCTION: COEXISTENCE OR ACQUIESCENCE? In trade mark law, as in diplomacy, coexistence may provide a pragmatic alternative solution to a conflict by favouring a principle of mutual tolerance. That a name is shared by two trade mark holders may thus, under certain conditions, render those marks compatible. It is accepted that in inter partes proceedings before the Office for Harmonization in the Internal Market (OHIM), coexistence of the conflicting trade marks in the same territory may be a relevant criterion when assessing whether there is likelihood of confusion in a given market. However, the argument taken from the coexistence of the marks must be distinguished from acquiescence within the meaning of Article 53 of Council Regulation 40/94 on the Community trade mark (CTMR). A claim for acquiescence constitutes an exception which can only be invoked before OHIM as a defensive argument in an action for invalidity and not in opposition proceedings, not least because Article 53 requires that the mark in regards to which the use was acquiesced for more than five years be registered.1 The impact of coexistence is two-fold. First, coexistence between the two marks involved in the opposition or invalidity proceedings may be persuasive of the non-existence of a conflict between the marks in the relevant public’s perception. Secondly, where many similar marks (other than the two marks involved in the opposition or invalidity proceedings) are used by competitors, such coexistence may affect the scope of protection of the earlier right relied on in...
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