Coexistence agreement with the world leader in electric scooters20 March 2020
Company specialized in the marketing of electric bicycles
The Client is a young and small company, operating in a booming and therefore highly competitive market.
It was confronted overnight with the appearance of an increasing number of electric scooters, bearing a brand name very similar to that of its electric bicycles.
This had a significant impact on the customer’s own development.
Eleven months between the first meeting on the dossier and the signing of a transactional agreement with one of the heavyweights on the world market.
Negotiation of an innovative settlement agreement with an end to cross proceedings (opposition and invalidity proceedings of EU trademarks before the EUIPO), compensation of our client and conclusion of a coexistence agreement.
Advising in the offensive litigation strategy (sending letters of formal notice to the US parent company and its European subsidiaries, introduction of opposition proceedings before the EUIPO) and defence against our client’s EU trademark invalidity action brought by the opponent on the basis of an earlier trademark purchased during the proceedings.
At the end of this process, the parties reached an innovative settlement agreement. On the one hand, the Adversary compensated the Client for the use of a similar trademark for similar products.
On the other hand, should the Adversary wish to enter the market for products covered by the Customer’s trademark in the future, the agreement provides for a license option with an entry fee and payment of royalties, the calculation method of which is already provided for.