Solving a dispute over who can use a trade mark for what part of the market with a trade mark co-existence agreement is always a risky move. The dispute in 2006 between the Beatles’ music publishing company - Apple Corps - and Apple the computer company, over whether the use of Apple for the iTunes service was within the terms of their 1980’s co-existence agreement (amended after a dispute in 1991), illustrated the fact that it is almost impossible to predict what new markets there will be in the future and hence to future-proof any co-existence agreement (see our IP newsflash 16 May 2006l).

However, the most recent case will come as some comfort to those living with co-existence agreements or contemplating entering into them since it is an example of the courts taking such an agreement seriously. The case, decided in June 2010, related to a long-running dispute between the US engineering company Omega Engineering Incorporated and the Swiss watchmaker Omega S.A. The Swiss company opposed the US company’s trade mark registration for OMEGA in respect of certain goods. The US company objected to this, citing a co-existence agreement from 1984 under which the Swiss company agreed not to oppose the US company’s registration of that mark in respect of those goods. Amongst other things the Swiss company argued that, following European case law, co-existence agreements are not relevant in resolving trade mark oppositions. However, the High Court rejected this argument and upheld the terms of the co-existence agreement. Whilst the Community trade mark registry’s approach to co-existence agreements remains to be confirmed, it is encouraging to businesses that have entered into co-existence agreements that the UK courts will take them into account. See our IP newsflash of 9 June 2010 available on our website at http://www.herbertsmith.com/NR/rdonlyres/8E9BEC43-9ED8-41CA-9389-53E6AB94BD0F/0/090610TheHighCourtupholdsJoelSmithandDanielPearce.html for more details.