Trade Mark Coexistence Agreements: What is all the (lack of) fuss about?

Traditionally, it is understood that trade mark law tackles the prospect of damage resulting from the use of confusingly similar trade marks. The aim is broadly to ensure commercial origin is differentiated and proprietary rights secured. A lot is written on this in Europe. In contrast, very little time and space is allocated to trade mark coexistence agreements. Despite a shortage of authoritative rulings, it is not immediately clear why, especially as they may be having a profound impact on the use of product markers. Coexistence agreements commonly exist between parties with at least similar trade marks who decide to formally coexist, often in the wake of legal skirmishes. In the busy European market, where Community-wide protection is available, an up-front contract may be an attractive way to avoid trade mark conflict. When these contracts work, trade mark law is effectively pre-empted as the underlying agreement, possibly remote of genuine trade mark concerns, is the real governing law. Among other things, this affects the ability of competitors to acquire rights and the quality of information available to consumers. A better understanding of these agreements is essential therefore, not least because on the limited occasions they come before trade mark bodies, the juridical response is inconsistent, though a theme that emerges is of a dismissive and unconvincing attitude. The reasons why are rarely elaborated and while this may simply reflect an awkward interplay between contracts and trade marks, the article deepens the discussion. Starting from concepts and commercial realities, the analysis proceeds to case law and underlying legal and economic rationale to determine whether the lack of fuss is justified.