Trademark coexistence agreements: Practical o problematic?”
- Asociación Cavelier
- 3 days ago
- 1 min read
Trademark Coexistence Agreements are legal instruments that allow business owners to use and register identical or similar trademarks in the market without generating disputes. Although Decision 486 of the Andean Community recognizes their validity in the subregional scope (Art. 159), it requires strict conditions for their legal relevance and effectiveness against third parties56: (i) the existence of identical or similar trademarks registered in different Member Countries; (ii) verifiable agreement between the parties; (iii) measures to prevent confusion or association by consumers; (iv) respect for competition; and (v) registration of the agreement before the corresponding national authority.
Nevertheless, at the national level, the Colombian Trademark Office usually rejects registration applications based on coexistence agreements. This has been confirmed by the jurisprudence of the Council of State7. For example, when deciding the nullity action filed by the applicant of the STARBUCKS trademark and where a worldwide coexistence agreement was provided with the holder of the STARBURST trademark (which was the basis for the refusal), the Corporation deemed that "(t)he coexistence agreement denotes the parties' perception of the risk of confusion that could exist among consumers8".
In conclusion, these agreements arise from business interest in overcoming trademark registration barriers and, although their usefulness for these purposes is not absolute, they are legal instruments that allow peaceful use of signs in the market, especially when clear restrictions are established that reduce the risk of confusion or association, such as limitation of goods or services.
WRITTEN BY: VALENTINA BARBOSA