Co-Existence Agreements and Trade Marks

By now most people will have heard of social media platform Twitter. Launched in 2006 it now boasts 330 million active monthly users, 100 million active daily users with 500 million tweets sent per day. While the name Twitter provides instant recognition, some may not have heard of online technological podcast network TWiT (aka This Week in Technology) who last week filed a lawsuit against Twitter for breach of contract, trade mark infringement and unfair competition. This breach of contract relates to a co-existence agreement between the two companies, dating back to 2007 allowing them both to continue business with their respective company names but without interference from the other.

According to the suit an agreement was put in place following co-founder of Twitter Evan Williams appearing on TWiT show ‘net@night’ in 2007 to promote Twitter when it first began to operate. While chatting with TWiT host and founder Leo Laporte, it is claimed that Williams acknowledged potential confusion between the names and admitted to instances of actual confusion having taken place. Both he and Laporte agreed to co-exist on the condition that ‘each company continue its own unique distribution platform’, with Twitter as a text-based microblogging site and TWiT as an online audio and visual content site.

Agreement brought into question

Then in 2009 following media reports that the Twitter brand would expand into video distribution, Laporte contacted Williams expressing concern for such a movement but was quickly assured that such expansion reports were untrue. However, fast forward to 2018 and following an announcement by Twitter in 2017 regarding plans to expand their brand with the use of video content, this decision was a clear breach of their agreement with TWiT. While efforts had been made both sides to reach an agreement the decision for legal action led to the suit being filed early January.

According to the court document filed in the U.S District Court for Northern District of California, TWiT and Laporte have stated they have suffered ‘great detriment to their business and reputation and the Twitter mark will continue to cause irreparable and continuing harm to TWiT.’

No comment has been made by either TWiT or Twitter, so it remains to be seen how this legal dispute will be determined. While companies may choose to engage in a co-existence agreement, the TWiT and Twitter lawsuit is an example of how this option does not always work. In fact, some may remember the famous Apple Inc and Apple Corp battle whose lengthy legal disputes over their co-existence spanned a period of nearly 30 years.

If you would like to know more about co-existence agreements, please contact us at post@cruickshank.ie and we would be happy to schedule a meeting with a member of our team.