Barreda Moller writes...

Coexistence Agreements

Decision 486, which considers the possibility of filing a coexistence agreement to allow the use of identical or similar marks owned by different entities in different countries members of the Andean Community, contains no specific provision related to coexistence agreements which would allow the registration of identical or very similar marks identifying identical or similar products or services in the same jurisdiction. Internal Peruvian Legislation does contain a provision stating that the parties in a procedure may agree to the coexistence of identical or similar marks upon condition that the National Authority considers that such coexistence will not negatively affect the general interest of consumers. The Peruvian Trademark Office has the discretionary power to accept or not a coexistence agreement which would lead to the coexistence, at the Registry, of identical or similar marks. The Andean Court of Justice, interpreting the rules related to coexistence agreements, has a long standing policy in that coexistence agreements whereby a trademark owner authorizes a junior applicant to register an identical or similar mark to distinguish identical or similar products/services are not mandatory upon the administration, the administration being in the need of considering the consumer’s interest since a consumer can be led to confusion if it confronts itself with two identical or similar marks in the market place, particularly when the marks are to distinguish identical products/services or products/services encompassed in the same international class. In addition to the review of the coexistence agreement, the Andean Court of Justice has mandated the Administrative Authorities to analyze general interest of consumers and particularly to determine if there is a risk of confusion.

In a very recent case deciding on the registrability of the trademark THE PLAYERS and a Golf Player Design applied for registration by PGA Tour, Inc. and which was initially refused registration citing trademark rights by The Professional Golfers’ Association of America (which incorporated a very similar Golf Player Design) the Administrative Court of Indecopi has set forth certain guidelines for the execution and acceptance of coexistence agreements. It has determined that in addition to the execution of a coexistence agreement which would allow the registration of a junior mark, the parties must include within the terms of the agreement specific references to commitments that in the promotion, advertising, and labeling the parties agree on differentiating the origin of the products/services. The Authority has also ruled that in case of specialty goods/services where the consumer usually adopts necessary measures to acquire goods or services of their interest and is in the capacity of distinguishing those from the goods/services supplied by another entity, the coexistence agreement will be accepted. The Authority has ruled that “the consumer who faces products or services which are specific in nature and knows the differences between each tournament, is a type of consumer which is in the capacity of differentiating the symbols” so that a coexistence agreement entered by the parties which includes a compromise to incorporate the necessary information in respect to the activity which is conducted by each entity, allowing each symbol to be completely differentiable, must be accepted.

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