Conflict between trademarks registered in the EU and the US?

弁理士

There is no general answer to your question. This issue is very fact specific.

弁護士

The Trademark registration protect your ownership on a brand only on the country you registered it. Note that you do not need to be located on this country or to conduct business in this country at the time of the registration, there is an option in the USPTO registration to do that.

It is common that someone owns a similar trademark of yours in a different country where you did not register your brand. As in your case.

So what is the risk of this, each owner has the right to request the ownership of its Trademark on the country where he registered the brand, which include the right to sue the other owner of infringement of its Trademark and request the judge and the custom to stop and destroy the goods marked with the Trademark in your country.

In short, if you expect to sell goods with your Trademark in USA, best thing is to check if your goods are really in competition with the ones of the owner of the US Trademark, and if not, to contact them through a lawyer to draft a contract allowing both to sell their goods on the country of the other, or to pay to be allowed by the other company to sell in its market.

Of course, there are plenty of other possibilities, depending on the real matter, but this is the usual picture of the situation.

To avoid this, the best thing to do is to register in each country where you are supposed to ship or sell your goods under this trademark.

Our Law Firm UTOPIA is doing this directly in Europe, the USA and China, and can register on any other country in the world. Just to avoid company like yours to be in the bad situation that you are describing in your question.

Hope this reply save your day.

Best regards.

IPコンサルタント

I was reviewing your question and in order to give you a clear answer can you please confirm the following:

1) Is the trademark for the same products and/or services?
2) Have you used your trademark in the US in the past? before this third party has?

Please note that as a first-to-use jurisdiction, in the US rights over a mark will correspond to the person or company who first used it within US territory, not the first person who registered it.