Co-existence agreements can be useful in resolving current or future uncertainties and difficulties faced by parties in the use of similar trademarks. However, such agreements are not recommended when the trademark holder is used: under the Trademark Act, orders may be issued by a court provided the court deems it appropriate. These include injunctions that can be issued in court to prevent the continuation of the violation of the trademark holder`s rights. You should check whether commitments not to challenge the other party`s IP address will be enforceable. In the United States and the EU, no dispute clause can be unenforceable, except in the context of the settlement of a dispute. Even in litigation, they are not always applicable. Another option is to provide that one party may terminate the contract if the other party challenges its investigative period. What is the primary legislation for brands in your country? Since transaction and co-existence agreements generally do not have a fixed duration, we recommend including an explicit right of termination in the event of an uncompensated infringement or insolvency. But also think about the other termination rights that should be included. Should one party be able to resign if the other party no longer intends to use the mark to which the agreement relates? Trademark infringement actions are usually filed by the registered trademark holder or, with the licensee`s consent, by an authorized user. Authorized users can also sue without authorization if the registered owner has not filed a lawsuit within two months, if the authorized user has requested it. What happens when a party transfers its trademarks to a third party? Should it ensure that third parties are bound by the agreement? What happens if a party sells its belongings to third parties? Should it be able to transfer the contract to the buyer without authorization? What if the buyer was a competitor to the other party? We recommend including a general transfer ban, with specific exceptions, to address the above issues, if necessary. Among the possible benefits of a co-existence agreement are: among the civil remedies available for trademark violations: given the restrictions imposed on the Executionis Forum and the impossibility of using the Forum delicti commissi, we believe that there is a last possibility to facilitate the application resulting from a violation of a co-existence agreement in countries other than the defendant`s home.
Including an explicit choice of the jurisdiction clause. Negotiating these clauses is not easy, provided that each party tries to ensure that the courts named in these clauses are their own original courts. It should be noted that there are some advantages to this choice (for example. B home disputes), but also some incompleteness. In particular, the need to obtain the court`s decision in a recognized and applied foreign jurisdiction if the defendant has his property in another country.