Delimitation Agreement Trademark

The case of Apple Corps, the label created by the Beatles, and Apple Computer2 illustrates the difficulties (see WIPO magazine 3/2006). In 1991, the two companies reached an agreement on the coexistence of trademarks. provided that Apple Computer has the exclusive right to use its Apple trademarks “on or in combination with electronic goods, computer software, computer services and data transmission”; Apple Corps would certainly have the exclusive right to use its own Apple trademarks “on or in relation to current or future creative works, whose main content was music and/or musical performances, regardless of the means used to record or communicate these works, tangible or non-tangible.” Although the two companies have similarly confused brands, they have identified an area in which they were different – that is, areas of application – and this has become the basis of their co-existence agreement. The agreement allowed both companies to continue to do business and build on their reputations without violating each other. If the co-existence agreement is the best option, the first step is for the two companies to delineate their respective activities and agree to respect those parameters. However, the real challenge is to anticipate the future evolution of each company`s activities. Where does each company want to see itself in ten or twenty years? Is there a risk that their respective expansion will align with each other`s territories? 51. Products reserved for companies X and Company Y do not necessarily have to be similar. Some Member States, including the Benelux countries, also allow a trademark holder to prevent the marketing under its brand of products that do not correspond to those for which the trademark is registered, e.g. B art. 13 A (2) of the single benelux law on trademarks (Eenvormige BenehixMerkenwei).

The Trademark Directive (19/104 O.J. L40/I Directive of the Council 1989) authorizes Member States to: provide that “the holder has the right to prevent all third parties who do not have his consent from using, in the course of commercial transactions, a sign which, with or similarly to the mark, unfairly exploits or alters the distinctiveness or reputation of the mark with respect to goods or services that do not resemble those for which the trademark is registered in the Member State and where the use of that sign, without diabolical grounds, exploits or alters the distinctiveness or reputation of the mark in an unfair manner” (Article 5, paragraph 2).

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