The non-existence of co-existence

levisWhile conducting searches to the availability of a trademark you get a perfect overall view of the current status of the trademark register. And we all have the experience of a quite popular word that has been claimed multiple times, all older trademarks peacefully co-existing in the trademark register. While an objection sometimes cannot be ruled out, the amount of identical/highly similar trademarks for identical products/services gives you an indication of the dilution of a word.
In an opposition however, the state of the register is a difficult point to address. EUIPO wants evidence of the current market situation, something that is difficult to proof.
Recently Levi’s filed an opposition against the device LEUI as the logo was quite similar to the logo of Levi’s. As several word marks LEUI were already registered, the Applicant put forward that the trademarks were already peacefully co-existing.
EUIPO acknowledges that the likelihood of confusion can be reduced by the coexistence of trademarks in the market. It should be proved that the consumer are used to seeing the marks without confusing them. Quite difficult to proof. Moreover, EUIPO is restricted in its examination to the trademarks in question. In this case, such evidence was not provided.
In respect of the dilution EUIPO states that only under certain circumstances EUIPO can consider the coexistence of earlier trademarks in the register as a dilution of the trademark rights. This has to be assessed case-by-case basis and should be treated with caution as there can be different reasons for the co-existence (like underlying agreements). Just making this point is not sufficient, this point has to be proofed thoroughly with probably market research.

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