Folliard-Monguiral, Arnaud --- "Coexistence in Community Trade Mark Disputes: When is it Recognized and What are its Implications?" [2009] ELECD 271; in Simon Fhima, IIanah (ed), "Trade Mark Law and Sharing Names" (Edward Elgar Publishing, 2009)

Book Title: Trade Mark Law and Sharing Names

Editor(s): Simon Fhima, IIanah

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781847202796

Section: Chapter 4

Section Title: Coexistence in Community Trade Mark Disputes: When is it Recognized and What are its Implications?

Author(s): Folliard-Monguiral, Arnaud

Number of pages: 20

Extract:

4. Coexistence in Community trade mark
disputes: when is it recognized and
what are its implications?
Arnaud Folliard-Monguiral*

1. INTRODUCTION: COEXISTENCE OR
ACQUIESCENCE?
In trade mark law, as in diplomacy, coexistence may provide a pragmatic alter-
native solution to a conflict by favouring a principle of mutual tolerance. That
a name is shared by two trade mark holders may thus, under certain conditions,
render those marks compatible.
It is accepted that in inter partes proceedings before the Office for
Harmonization in the Internal Market (OHIM), coexistence of the conflicting
trade marks in the same territory may be a relevant criterion when assessing
whether there is likelihood of confusion in a given market. However, the argu-
ment taken from the coexistence of the marks must be distinguished from
acquiescence within the meaning of Article 53 of Council Regulation 40/94 on
the Community trade mark (CTMR). A claim for acquiescence constitutes an
exception which can only be invoked before OHIM as a defensive argument
in an action for invalidity and not in opposition proceedings, not least because
Article 53 requires that the mark in regards to which the use was acquiesced
for more than five years be registered.1
The impact of coexistence is two-fold. First, coexistence between the two
marks involved in the opposition or invalidity proceedings may be persuasive
of the non-existence of a conflict between the marks in the relevant public's
perception. Secondly, where many similar marks (other than the two marks
involved in ...