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Trademark Concurrent Use Agreement Template for England and Wales

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Key Requirements PROMPT example:

Trademark Concurrent Use Agreement

"Need a Trademark Concurrent Use Agreement to allow our UK-based tech company to use a similar trademark to a US company in the European market, with specific provisions for online sales and digital products from March 2025."

Document background
A Trademark Concurrent Use Agreement becomes necessary when two or more parties discover they are using similar trademarks and wish to formalize their coexistence rather than engage in litigation. This type of agreement is particularly relevant under English and Welsh law where businesses seek to resolve potential trademark conflicts amicably. The agreement details specific terms of use, including geographical limitations, market sectors, and quality control measures. It provides a framework for peaceful coexistence while protecting each party's brand value and preventing consumer confusion.
Suggested Sections

1. Parties: Identification and details of all parties to the agreement

2. Background: Context of the agreement, including existing trademark rights and reason for concurrent use

3. Definitions: Key terms used throughout the agreement

4. Grant of Rights: Specific terms of concurrent use, including territorial scope and permitted uses

5. Quality Control: Standards for trademark usage and quality maintenance

6. Term and Termination: Duration of agreement and circumstances for termination

Optional Sections

1. Registration Provisions: Used when parties need to coordinate trademark registration activities - applicable when concurrent use involves pending applications or future registrations

2. International Rights: Provisions for trademark use in multiple jurisdictions - applicable when agreement covers multiple countries

3. Dispute Resolution: Specific procedures for resolving conflicts - applicable when parties want to specify alternative dispute resolution methods

Suggested Schedules

1. Schedule of Trademarks: List of relevant trademarks, registration numbers, and jurisdictions

2. Territory Schedule: Detailed description of geographical areas for concurrent use

3. Quality Standards: Specific requirements for maintaining trademark quality and consistency

4. Approved Forms of Marks: Visual representations of permitted trademark usage

Authors

Alex Denne

Head of Growth (Open Source Law) @ ¶¶Òõ¶ÌÊÓÆµ | 3 x UCL-Certified in Contract Law & Drafting | 4+ Years Managing 1M+ Legal Documents | Serial Founder & Legal AI Author

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Relevant Industries
Relevant Teams
Relevant Roles
Industries

Trade Marks Act 1994: Principal UK legislation governing trademarks, including key provisions on registration, rights conferred, licensing, and concurrent use (particularly sections 11 and 12 on concurrent use and honest concurrent use)

Trade Marks Regulations 2018: Implementing regulations that supplement the Trade Marks Act, containing detailed provisions regarding trademark applications and proceedings

Competition Act 1998: Ensures the agreement complies with competition law, particularly regarding market division and territorial restrictions in concurrent use arrangements

Consumer Protection from Unfair Trading Regulations 2008: Protects consumers from misleading practices, ensuring concurrent use arrangements don't create confusion in the marketplace

EU Trade Mark Regulation: Relevant for considering any EU trademark rights and their interaction with UK rights in concurrent use agreements

Paris Convention for the Protection of Industrial Property: International treaty providing framework for intellectual property protection across multiple jurisdictions

TRIPS Agreement: International agreement setting minimum standards for intellectual property regulation in WTO member countries

Common Law Principles: Body of case law covering trademark concurrent use, passing off principles, and good faith requirements in commercial contracts

Teams

Employer, Employee, Start Date, Job Title, Department, Location, Probationary Period, Notice Period, Salary, Overtime, Vacation Pay, Statutory Holidays, Benefits, Bonus, Expenses, Working Hours, Rest Breaks,  Leaves of Absence, Confidentiality, Intellectual Property, Non-Solicitation, Non-Competition, Code of Conduct, Termination,  Severance Pay, Governing Law, Entire Agreemen

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