In trademark law, a coexistence agreement is an agreement by which the parties, owners of similar or identical trademarks, decide to organize their coexistence, subject to specific requirements. These conditions may vary depending on the circumstances facing the parties. Such conditions are intended to limit the trademarks, particularly their form, their object (the products and/or services offered), or their territorial scope. The purpose sought by the parties is that of the peaceful use of their respective brands. Therefore, the coexistence agreement aims to end conflicts (it then takes the form of a settlement agreement) or prevent them. Penal clauses often sanction coexistence agreements, and future dispute settlement clauses generally call for alternative dispute resolution methods of a confidential nature (mediation, arbitration, med-arb).
An emblematic example of a trademark coexistence agreement is that concluded between Apple Corps and Apple Computer, in which the parties had defined their areas of activity. : the music for Apple Corps. ; information technology or Apple Computer. The parties thus enjoyed relative peaceful use of their respective trademarks until the invention of iTunes, which gave rise to well-known litigation (Apple Corps Ltd v Apple Computer Inc.).
The advent of e-commerce has made the use of coexistence agreements on trademarks and domain names essential. Priority searches and domain name surveillance reveal the existence of business identifiers whose legitimacy cannot peremptorily be called into question. Such circumstances should invite the parties to conclude a coexistence agreement.
Thus, in the recent case D2021-2756 (WIPO, D2021-2756, Nordic Nest AB v. Anette Grostad, October 14, 2021), the parties could have judiciously resorted to a coexistence agreement. Swedish company Nordic Nest AB sued Ms. B (California), over the domain name <shopnordicnest.com>, registered in 2016. The plaintiff owns “Nordic Nest” trademarks registered in the European Union since 2015 and in the United States since 2019, particularly for the sale of home items. The defendant runs a shop where she sells items with a similar characteristic: the Nordic style. However, according to the defendant, the search for prior trademarks carried out previously to the creation of the domain name had not revealed any “Nordic Nest” trademark in the United States for the sale of household items. In addition, the plaintiff’s mark is not well-known. Besides, the panelist noted that the “Nordic Nest” trademark for home items was suggestive, without going so far as to call it descriptive. Given the circumstances, the panelist rejected the request to transfer the domain name. Therefore, several options are possible:
- the judicial procedure (which grants all the means necessary for the demonstration of the truth, unlike the UDRP);
- the assignment of the domain name; or
- the license of the domain name.
The coexistence agreement could also be considered since the plaintiff does not appear to claim any commercial activity outside the United States. A territorial delimitation, both in the physical and digital world, could therefore be considered.
