Conflict US and European trademark?

弁理士

If there is a valid registered TM here in the US for the mark you are intending to use here in the US, yes, you would infringe that mark even though you have the mark registered in Europe. One avenue you might use is to approach the US TM holder/owner and either obtain a license to use the mark here in the US, OR, even better, ask the US TM owner/holder if he is interested in effectively cross-licensing the marks whereby you can freely use the mark here in the US and he can freely use the mark in Europe.

弁護士

Thank you for asking this question, which point to a general interest.

If you registered in Europe only because the trademark was not available anymore in US, you are probably wrong but do not worry, you will see that we have solution for you even in this case.

Trademark protection need to be understood as protection in the country where the brand is registered, so the best protection is to register on the market where your customers will be. As said if you are not selling goods and if you have no need to make local marketing in your target countries, such as tradeshow, magazine advertising, etc.. You will not really be at risk in the other countries where your brand is not registered.

I want to stress that the registration of a trademark is only valid for the class selected during the registration process. Which means that you will find the same trademark name several times in the same market, as long as both companies are not selling the same products or delivering the same service.

First is to check correctly if you are really in the same market or not.

At last you can register a company in Europe and sell your service online from there, as long as all transaction is served from Europe and delivered from there. You will not be at risk with the current owner of the US trademark.

I also recommend to check if the current US Trademark is really valid, and you cannot do that without asking a lawyer to do it.

We can maybe help your company, to incorporate in Europe and to manage your trademark issue.

IPコンサルタント

Note that the United States uses the "first to use" system, meaning that the first person to use the trademark - in the United States - should be the real owner of the trademark (as opposed to a "first to file" system). Having this said, it is understood in by the United States Patent and Trademarks Office (USPTO) that you start using the trademark once the services are available to the public through a website, therefore if you already have a site online and have had it for some time, then there may be some steps we could take, starting by investigating if the other party has already started using the trademark. A second thing to look for is the classification of the trademark, as Thierry pointed out. We can research these two matters for free in order to find what options we may have.

商標エージェント

Just to remind that Switzerland does not make part of the European Trademark System therefore a trademark application must be filed here if you desire to cover the Swiss territory