By Eryck Castillo and Carolina Ponce
Uhthoff, Gomez Vega & Uhthoff, S.C.
Nowadays, trademark owners find more difficulty in choosing a trademark that is free for use and registration. World commerce is more crowded so trademark owners sometimes find that the names or signs they choose to distinguish their products or services are already used by other parties. However, similar or identical trademarks can coexist as long as each continues to perform their main function, namely, to distinguish the goods or services for which they are used from those of their competitors.
The registration of marks which comprise a similar or identical nature has been permitted when the similarity does not confuse consumers into being unable to identify which goods or services are which. Coexistence agreements support this issue since they describe a situation in which two different enterprises use a similar or identical trademark to market a product or service without necessarily interfering with each other’s businesses.
In short, a coexistence agreement is any agreement between two or more parties that regulates concurrent use and registration of two or more trademarks that comprise an identical or confusingly similar nature in a certain jurisdiction(s). In such agreement, the parties recognize the right of the other to their respective mark and agree the terms on which they may exist together in the market place. Such coexistence may be based on a division of the territories in which each registrant may operate, or on a delimitation of their respective fields of use.
The use of coexistence agreements around the world is increasing even more. The global economy permits trademark owners to sell their products or render their services in other jurisdictions outside their countries of origin. This often creates a problem when entering another country and finding out that a senior identical or similar trademark already exists. Consequently, trademarks which had happily coexisted at one time may suddenly enter into a conflict. An alternative to this scenario may be to conclude a formal coexistence agreement in order to prevent the future use of the two marks, overlapping in such a way as to become undesirable or infringing.
These actions were commonly followed in Mexico in the past and the submission of coexistence agreements was a common practice to prevent a refusal for registration of the junior mark based upon the senior mark’s prior rights.
Unfortunately, for the past couple of years, the Mexican Institute of Industrial Property (IMPI) has rejected the submission of coexistence agreements in support of the registration proceedings of a junior trademark, arguing a duty to protect consumers from being misled into confusion if both marks are permitted to coexist. IMPI has closed the door to the acceptance of coexistence agreements not only for unrelated companies which share an identical or confusingly similar trademark, but also for sister or associated enterprises which have trademarks that share one common element, i.e. multinational companies having subsidiaries that need to share the housemark in their respective trademarks and which, for internal reasons, have the necessity to register them on their own.
This decision shows not only an irrational criteria preventing free trade between the parties, but also diverge from the points of view adopted by other International jurisdictions such as the U.S. and OHIM.
Unlike what happens in Mexico, the United States Patent and Trademark Office (USPTO), gives great weight to consent agreements, reasoning that the parties to the agreement are most familiar with use in the marketplace and most interested in precluding confusion. In these situations, an agreement consenting to the registration of a mark must recite the reasons why the applicant and the owner of the senior mark believe there is no likelihood of confusion and how they intend to cease actual confusion that occurs. So long as the parties specifically describe why there is no likelihood of confusion between their respective marks, and set forth a plan to avoid any future confusion, case law is clear that a consent agreement between the parties is to be accorded substantial weight by the USPTO Examining Attorney. The case law further indicates that in order for a registration refusal based upon likelihood of confusion to be affirmed despite the existence of a consent agreement between the parties, the USPTO must put into the record evidence which tends to negate the underlying assumptions in the consent agreement, and/or point out that the consent is contradictory on its face. Absent this type of evidence, the trademark should proceed to registration.
Moreover, a recent European decision upheld the terms of a coexistence agreement in the long-running dispute between the US engineering company Omega Engineering Incorporated and the Swiss watchmaker Omega S.A.
Considering that IMPI no longer accepts coexistence agreements, then a refusal for registration of a trademark application is subject of an administrative recourse with a higher ranking officer of IMPI (these actions are often a complete waste of time) or an appeal (nullity petition) before the Federal Court of Tax and Administrative Justice (TFJFA) who has a specialized chamber involving IP matters. This specialized court has been confirming the decisions adopted by IMPI, consequently a second and final appeal (called amparo directo) may be brought before the Circuit Court.
Notwithstanding the above, there is still a window open (an option) for enterprises in need to have the protection of their trademarks throughout different related companies. This, since some Courts at the Circuit Level have ruled in these kinds of matters by accepting coexistence agreements executed between related enterprises. It is important to have in mind, that these decisions are not binding, since not all of the chambers at the Circuit Court have dealt with this issue, therefore, one Circuit Court can rule in a different sense as another Court has done so.
In 2010, the Fourth Circuit Court accepted to grant into registration a confusingly similar trademark after a coexistence agreement was executed including information that the parties involved pertained to the same economic group. This decision was based on article 55 of the Intellectual Property Regulations, which establish when it should be considered that two or more enterprises pertain to the same economic group. Such Authority mentioned that IMPI and the TFJFA forgot to apply this article in benefit of the applicant.
In addition, this Circuit Court has mentioned that if a coexistence agreement is executed between related companies, any Authority studying the registrability of a trademark should grant into registration the proposed trademark. Due to the foregoing, it is obvious that there will be no confusion for the consumer since the coexistence of the involved trademarks will be aimed to a common interest and benefit between the involved entities.
Moreover, the Third Circuit Court has ruled that in order for such Authority to take into consideration a coexistence agreement between enterprises pertaining to the same economic group, the involved parties should prove such relationship.
In such case, the Court has argued that Mexican legislation has no express provision in which it mentions that a coexistence agreement has to be taken into account in order to grant into registration a confusingly similar or identical trademark. Therefore, there is no obligation to consider any of these documents at the time they study the registrability of a trademark. The latter, based on the fact that no agreement executed between private parties should not be considered as above from the law.
In sum, two decisions were issued in 2010 by different Circuit Courts, both deciding over the acceptance of trademark coexistence agreements in different ways. One has accepted the weight of a coexistence agreement executed between related companies pertaining to the same economic group and permitted the junior mark into registration. The other, refused the registration of the later mark notwithstanding a coexistence agreement executed between related companies. However, both decisions have a common criteria into giving relevance to this kind of documents when the relationship between the parties is explained in the contents of the same.
We are aware that various tribunals around the globe weigh the validity of coexistence agreements differently. The decisions range from complete reliance on the terms of the agreement, to giving heavy weight to the agreement, to feeling free to invalidate an agreement if it is detrimental to public interest. Trademark examination offices around the world also have their own policies when it comes to allowing registration of marks for companies who have coexistence agreements with senior users of confusing marks.
Even though, the strict criteria adopted by IMPI results harmful for trademark owners around the world which are prevented from registering their trademarks in Mexico and in consequence policing them against unlawful uses by third parties, still these recent decisions issued by the Circuit Court provide a light of hope to multinational corporations which have the necessity to protect their trademarks in the name of different entities in Mexico.