When a coexistence agreement is proposed: what to do first
A coexistence agreement is a proposal, not a settlement already in force. Before you discuss any term of it, confirm whether an opposition or cancellation deadline is already running at the trade mark office, and confirm who inside your organisation has authority to limit the scope of your mark. Treat the draft as an opening position in a negotiation, not as a shortcut that closes the matter on its own.
The legal basis
A European Union trade mark is a single right granted and administered under Regulation (EU) 2017/1001 (EUTMR). The regulation governs registration, opposition, and cancellation of that right. It does not regulate coexistence agreements themselves. Those remain private contracts between the parties holding the conflicting marks, sitting alongside the statutory procedure rather than replacing it.
The EUTMR gives the proprietor of an earlier mark the right to oppose a later application, and gives the proprietor of a later mark the right to defend that application or seek cancellation of the earlier right where the two are confusingly similar. A coexistence agreement is negotiated in the shadow of that right, whether or not a formal procedure has actually been opened.
The proposal can originate from either side. An applicant facing an opposition may offer coexistence to keep its own filing alive at lower cost. An earlier proprietor may offer it to avoid the expense and the publicity of a full opposition. Neither motive changes what the signed document does afterwards.
What changes once the proposal lands
Receiving a coexistence proposal does not pause any procedural clock that is already running. If an opposition or cancellation action has been filed, the deadline for your response continues regardless of settlement talks taking place in parallel. If no procedure has started yet, the proposal itself does not create a deadline — but the underlying conflict does not disappear simply because it has been put in writing.
Signing the wrong agreement can leave you worse off than signing none. A coexistence agreement that limits your goods, your territory, or your get-up becomes binding once executed, and it is difficult to unwind later, including in a future dispute with a third party who was never party to the negotiation.
If part of your enforcement strategy relies on the border, note that customs authorities acting under Regulation (EU) No 608/2013 enforce the register as it stands at the time of the application for action. A coexistence agreement that narrows your registered scope narrows what customs can act on as well, even where the narrowing was meant only to resolve a dispute with one specific competitor.
| Where you stand | What is already running | What you still control |
|---|---|---|
| Opposition or cancellation already filed | The response deadline stated in the office's own notification | Whether to request an extension while negotiating, and what to concede in the draft |
| No procedure filed, proposal sent directly | No statutory deadline yet | The pace of the negotiation, and whether to file a protective action first |
| An agreement already signed by a previous team | The scope of the existing limitation | Whether the new draft narrows that scope further or simply restates it |
What to do first
- Locate the procedural clock. Ask whoever received the office notification — typically in-house counsel or your outside representative — to confirm the exact calendar date in writing before any term of the draft is discussed.
- Map the actual conflict. Have the brand or portfolio manager pull the specification of goods and services for both marks side by side. Drafts negotiated before this step is done tend to concede more than the real overlap requires.
- Identify who signs. A coexistence agreement binds the registered proprietor. Confirm that the negotiator has authority to limit the mark, and that group companies holding parallel registrations are included, or excluded, on purpose rather than by omission.
- Read the limitation clauses first. Get-up, colour, and channel restrictions usually matter more in a later dispute than the recitals do, so review them before the commercial summary at the top of the draft.
- Prepare the counter-draft. Do not sign the first version received. Route your amendments back before the deadline identified in step one, not after it has passed.
- Route the decision through the portfolio owner. A limitation recorded against a registered mark is difficult to remove later, so the final sign-off should sit with whoever answers for the portfolio, not with the negotiating team alone.
Who decides, and on what evidence
Where an opposition or cancellation is already filed, the competent division of the office decides the underlying procedure, unless the parties formally withdraw it following agreement. That division examines the marks, the specifications of goods and services, and any evidence of confusion or genuine use filed by the parties. It does not review the fairness of a private coexistence agreement — that remains a matter between the signatories alone.
Where no procedure is pending, no office decides anything at that stage. The choice to sign, amend, or refuse the proposal rests with the proprietor of the mark, acting on the map of the real conflict prepared in step two and on advice specific to the draft on the table.
If your situation differs
If the other side refuses any coexistence and files an opposition regardless of the talks, respond to the pending procedure directly on its own deadline rather than continuing to negotiate against a clock that keeps running.
If the mark under negotiation is also used by a distributor who is later sued over goods sold under it, that is a separate dispute with its own procedure — see When a distributor is sued over your product step.
If the negotiation overlaps with a technology contract where a customer claims ownership of improvements made under the same brand, that ownership question is decided separately — see When a customer wants ownership of improvements: what to.
If the mark under discussion also appears in a white paper prepared for a token issuance, updating that document raises a distinct question of its own — see When a white paper needs an update and its.
What this page does not resolve
This page does not draft the coexistence agreement, does not value the concession being asked of you, and does not tell you whether to accept a specific limitation on goods or territory. Those depend on the facts of your portfolio and the specific draft in front of you.
Related situations
A coexistence proposal is one of several situations where a third party's move on a registered right forces an immediate decision — see When a design is copied by a competitor step.
Verified
Checked against Regulation (EU) 2017/1001 (EUTMR) and Regulation (EU) No 608/2013, current at the time of writing. This page addresses the legal procedure only; it does not address which registers should be checked before a coexistence proposal is accepted, or over what timeframe — that is covered separately in Asset in Czechia and the deadline.
Frequently asked questions
What is the first step when a coexistence agreement is proposed?
Confirm whether an opposition, cancellation, or invalidity action is already pending. If it is, the response deadline stated in the office's notification governs your timeline, regardless of the settlement talks running alongside it.
Which deadline is already running?
If a procedure is pending before the office, the applicable deadline is the one stated in the notification issued for that specific procedure. If no procedure has started, no statutory deadline is running yet, though the underlying conflict does not resolve itself in the meantime.
Who decides, and on what evidence?
Where a procedure is pending, the competent division decides on the marks, the goods and services, and the evidence filed by the parties, unless the parties withdraw the procedure after agreement. Where no procedure is pending, the decision to sign rests with the proprietor, not with any office.
I read the proposal alongside the pending procedure, not the recitals in isolation. If you have a coexistence draft and a clock already running, send both together — the first response comes from a partner, in minutes, during business hours, and the fee for the engagement follows in writing within one business day.