Trademark coexistence agreements: Practical o problematic?

Trademark coexistence agreements are legal instruments that allow business owners to use and register identical or similar trademarks in the market without generating disputes. These agreements are commonly used as a strategic tool to overcome registration barriers and facilitate market entry.

However, while coexistence agreements are recognized at the Andean Community level, their effectiveness before national trademark offices—particularly in Colombia—raises important legal and practical questions.

Legal Basis of Trademark Coexistence Agreements

Decision 486 of the Andean Community expressly recognizes the validity of coexistence agreements at the subregional level (Article 159). For such agreements to have legal relevance and effects against third parties, strict conditions must be met:

• The existence of identical or similar trademarks registered in different Andean Member Countries.

• A verifiable agreement between the parties.

• Effective measures to prevent confusion or association among consumers.

• Respect for free competition principles.

• Registration of the agreement before the corresponding national authority.

These requirements aim to balance private agreements with consumer protection and market transparency.

The Colombian Trademark Office’s Restrictive Approach

Despite their recognition under Andean law, the Colombian Trademark Office frequently rejects trademark applications supported by coexistence agreements. This position has been consistently upheld by the jurisprudence of the Council of State.

A notable example is the case involving the STARBUCKS trademark, where a worldwide coexistence agreement with the holder of the STARBURST trademark was submitted as part of the application. The Council of State held that “the coexistence agreement denotes the parties’ perception of the risk of confusion that could exist among consumers”.

This reasoning reflects the authority’s position that coexistence agreements may, paradoxically, confirm the likelihood of confusion rather than eliminate it.

Are Coexistence Agreements Still Useful?

Although coexistence agreements do not guarantee registration approval in Colombia, they remain valuable legal instruments in certain contexts. Their usefulness lies primarily in facilitating peaceful coexistence in the market, especially when they include:

• Clear limitations on goods or services.

• Territorial restrictions.

• Distinctive branding or presentation measures.

When properly structured, these restrictions can significantly reduce the risk of confusion or association among consumers.

Key Takeaways for Brand Owners

• Coexistence agreements are legally recognized but not determinative for trademark registration in Colombia.

• National authorities prioritize consumer protection over private arrangements.

• These agreements should be drafted carefully, with realistic expectations regarding their effects.

• Strategic legal advice is essential before relying on a coexistence agreement as a registration strategy.

Conclusion:

Trademark coexistence agreements arise from legitimate business interests and can serve as effective tools for managing trademark conflicts. However, in Colombia, their practical impact is limited by a strict administrative and judicial approach focused on preventing consumer confusion.

Understanding their scope, limits, and strategic value is key for brand owners seeking to navigate trademark registration challenges in regulated markets.

WRITTEN BY: VALENTINA BARBOSA

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