This Agreement is dated [insert date] Parties 1 [insert name] [of OR a company incorporated in [England and Wales] under number [insert registered number] whose registered office is at] [insert address] (Assignor); and 2 [insert name] [of OR a company incorporated in [England and Wales] under number [insert registered number] whose registered office is at] [insert address] (Assignee) (each of the Assignor and the Assignee being a party and together the Assignor and the Assignee are the parties). Background (A) The Assignor is the [registered] owner of certain trade marks. (B) The Assignee is [insert description of the Assignee’s background/background to assignment or relevant transaction]. (C) [On [insert date] the Assignor submitted an application to the [United Kingdom Intellectual Property Office OR European Union Intellectual Property Office] to register [a proposed trade mark OR certain proposed trade marks].] (D) The Assignor agrees to assign its rights in [that trade mark OR those trade marks ] [and in the application for the proposed[ trade mark OR trade marks] ] to the Assignee and the Assignee agrees to accept the assignment in accordance with the terms of this Agreement. The parties agree: 1 Definitions and interpretation 1.1 In this Agreement: Affiliate

This Agreement is made on [insert date] (the Commencement Date) Parties 1 [insert name], [of OR a company incorporated in [England and Wales] under number [insert registered number] whose registered office is at] [insert address] (Party A); and 2 [insert name], [of OR a company incorporated in [England and Wales] under number [insert registered number] whose registered office is at] [insert address] (Party B) (each of Party A and Party B being a party and together Party A and Party B are the parties). Background (A) Party A is the[ registered] proprietor of certain trade marks covering [describe goods/services to which Party A’s trade marks relate] as set out in Schedule 1. (B) Party B is the[ registered] proprietor of certain trade marks covering [describe goods/services to which Party A’s trade marks relate] as set out in Schedule 1. (C) Each party wishes to enter into a coexistence agreement in respect of certain trade marks as set out on the terms of this Agreement to settle their current dispute and to avoid any disputes in the future. (D) [insert other details of the parties’ past

This Practice Note provides practical guidance on trade mark coexistence agreements, detailing when these might be used and key points to consider when drafting them. It also sets out guidance on the key terms to be included in coexistence agreements. It is designed to be used alongside Precedent: Trade mark coexistence agreement, Practice Note: Negotiation guide—trade mark coexistence agreement and Trade mark coexistence agreement—checklist. For more information about settling IP disputes generally, see Practice Note: How to settle an IP dispute. What is a coexistence agreement? A trade mark coexistence agreement may be used where the owners of separate, similar or identical trade marks, which could give rise to confusion, agree to clarify the circumstances under which the respective marks may be used and/or registered so as to reduce the risk of confusion, settle any disputes between them and/or avoid future disputes. The rationale behind such an agreement is therefore that both parties set out the terms upon which their marks may peacefully ‘coexist’ without either party arguing that their respective trade mark rights are infringed. For

This Checklist identifies the key terms typically included in a trade mark coexistence agreement. It can be used as a checklist of issues to consider when drafting, reviewing or negotiating such agreements. It can also be adapted for use as a heads of terms to record basic agreed terms while a formal trade mark coexistence agreement is being negotiated. For guidance on how to do this, see Precedent: Heads of terms—commercial contracts. For an example coexistence agreement, see Precedent: Trade mark coexistence agreement. For more information about the considerations to take into account when drafting a coexistence agreement, see Practice Notes: Trade mark coexistence agreements and Negotiation guide—trade mark coexistence agreement. Checklist Points to consider Further information Notes (if any) (A) Key commercial considerations ☐ Parties Confirm which entities will be party to the agreement—identify which entities own the trade marks (and any associated rights) and which entities are using them. Confirm each party’s legal status and whether any third parties (such as group affiliates) will benefit from the proposed agreement. Commencement, duration and termination ☐

IP analysis: When a trade mark is descriptive of the products for which it is registered, or the mark is generic, it is liable to be invalidated because the mark may not distinguish the products of one undertaking from another (ie, it may not operate as a trade mark). However, a mark that is prima facie descriptive or generic can be rescued by acquiring distinctiveness. These issues were a key battleground in this case, which provides particularly useful guidance for practitioners on the relevant factors for genericide. The court held that, while DRYROBE was not a generic term at any relevant time, it was descriptive of robes that dry the wearer or keep them dry. Therefore, had the court not gone on to find that DRYROBE had acquired a distinctive character, the claimant’s marks would have been invalidated in relation to all specified categories of goods containing such robes. The finding of acquired distinctiveness meant the claimant retained its registrations in full and, ultimately, succeeded in its infringement claim against the defendant. Written by Robert Dickens, associate at White & Case LLP.

IP analysis: The Court of Appeal upheld an IPEC decision that, while the trade mark proprietor could not object to the sale of modified versions of goods on the secondary market (due to the defence of exhaustion provided by section 12(1) of the Trade Marks Act 1994 (TMA 1994)), the claimant had legitimate reasons to oppose the defendants’ activities where this created an impression of a commercial connection between the parties. The court looked at the test to be applied, while reiterating that such cases are highly fact-sensitive. The Court of Appeal also refused the claimant’s cross-appeal relating to copyright in industrial designs, finding that while the claimant’s design document was an original artistic graphic work, the related physical article itself was not an artistic work so the defendant was entitled to a defence under section 51 of the Copyright, Designs and Patents Act 1988 (CPDA 1988). In doing so, the court considered the meaning of ‘graphic work’. Written by Andrew Leese, partner at Knights Professional Services Ltd.

The purpose of this Precedent trade mark filing sheet is to provide an efficient mechanism for a business to set out instructions as to the form and scope

This Practice Note explores the use of interim relief in trade mark proceedings. Owing to the nature of trade mark rights and the commercial arrangements relating to them, the various types of interim relief available in English proceedings can be particularly valuable to claimants in trade mark disputes. In particular, the following types of order are relevant: • interim prohibitory injunctions • search orders • Norwich Pharmacal Orders Interim prohibitory injunctions In cases of trade mark infringement, considerable damage can be suffered by the trade mark owner during the early stages of the infringement. For example: • if a competing product enters the market under a confusingly similar mark, the resulting consumer confusion is likely to cause the trade mark owner to become less able to distinguish its goods or services in the market. Such confusion and dilution will reduce the value of the trade mark • the launch period is also the crucial period for a new product to establish itself in the market. The infringing product

IP analysis: The case is a relatively straightforward trade mark infringement and passing off case including a counterclaim for invalidity on the basis that the claimant's registrations should be deemed descriptive and non-distinctive and/or should be revoked for non-use. It contains some useful decision points and analysis on use from non-UK websites, following the decision in Lifestyle Equities v Amazon, an analysis of marks that are used in a form different to the mark as registered and also how the low level of distinctiveness of a trade mark is disadvantageous when it comes to infringement and passing off decisions even when the marks are similar to one another. As a result, it was held that there was no infringement or passing off in relation to the word mark but there was infringement of one of the device mark combinations since the device itself lent distinctiveness to the mark as a whole. Written by Helene Whelbourn, legal director at Lee & Thompson LLP.

Introduction This document contains quick links to the Precedents relevant to trade mark infringement and passing off. These include letters of claim and the main statements of case to start and then run trade mark infringement and passing off proceedings. Precedents Cease and desist letter—IP infringement See Precedent: Cease and desist letter—IP infringement. This Precedent is a short form cease and desist letter, sent as a first step in a dispute relating to the infringement of IP rights. It is broadly drafted so that it can be used in relation to the infringement of any of the key IP rights and it is intended to be used in circumstances where the right holder hopes to resolve the matter swiftly, without recourse to further action. This Precedent is not intended to act as a formal ‘letter of claim’. It is a more informal letter which does not include proposed undertakings and which aims to encourage cooperation from the recipient. Examples of the types of scenario where an informal cease and desist letter might be appropriate

IP analysis: This Court of Appeal judgment, predominantly in Lidl’s favour, is the latest of a number in this litigation concerning Lidl’s well-known logo and the more recent adoption by Tesco of a similar device for its Clubcard prices marketing. The appeal court found the trial judge was entitled to decide that consumers understood Tesco’s similar Clubcard device to mean that Tesco were ‘price matching’ Lidl for the relevant goods. This was so, notwithstanding Lord Justice Arnold and Lord Justice Lewison agreeing this factual finding was ‘surprising’ and Lewison LJ noting the trade mark and passing off claims to be at ‘the outer boundaries of trade mark protection and passing off’. The price matching finding together with the judge’s findings which were not challenged, meant there was trade mark infringement and passing off. The trial judge’s findings of copyright infringement and that a number of Lidl’s registered trade marks for its logo were invalid were also challenged on appeal. Written by Bonita Trimmer, consultant at Browne Jacobson LLP.

This Practice Note covers infringement of trade marks under EU law. It focuses on the EU trade mark (EUTM) regime set out in Regulation (EU) 2017/1001 but also covers the harmonised trade mark law framework set out in Directive (EU) 2015/2436. It considers types of trade mark infringement, who may bring a claim, the meaning of legislative provisions and relevant case law. Rights conferred by a trade mark registration The registration of a trade mark gives the owner the exclusive right to prevent others from using that mark without their consent. The rationale behind the protection is to ensure that the registered trade mark acts as a ‘guarantee of origin’ in relation to the goods and services for which it is registered. If a member of the public buys a can of Coca-Cola, they are entitled to assume that they are buying the well-known original soft drink and not an imitation. If someone else uses a registered trade mark, or a confusingly similar one, without permission from the trade mark owner, there may be a claim for trade mark