trademark question

millymash12

Hi

My company want to trade mark a brand name in Ireland, the UK and Europe. However there is a company in America that has already trademarked the name with a similar product range.

Is there anyway around this?

edanto

Has the US company already trademarked it anywhere in the EU?

millymash12

How can I check if they have it registered in the EU?

edanto

This may read harsh, but I think you might struggle as an entrepreneur unless you develop your initiative.

https://www.google.ie/search?q=check+emu+trademark&rlz=1C1CHMO_enIE505IE505&oq=check+emu+trademark&sugexp=chrome,mod=14&sourceid=chrome&ie=UTF-8#hl=en&safe=off&tbo=d&rlz=1C1CHMO_enIE505IE505&sclient=psy-ab&q=check+eu+trademark&oq=check+eu+trademark&gs_l=serp.3..0i30.4732.4732.0.4941.1.1.0.0.0.0.30.30.1.1.0.les%3B..0.0...1c.1.Gt7HtLvHlUs&pbx=1&bav=on.2,or.r_gc.r_pw.r_cp.r_qf.&bvm=bv.1357700187,d.ZG4&fp=4dc690196391bfb5&biw=1280&bih=963

Graham

Am I missing something here?

Surely the point of a Trademark is to uniquely place your product/service in the market so it can't be confused with any other similar product/service?

If that product/service is already being offered (all be it in a different geographic region) under the same name, what's the point of registering the trademark? Especially given the internet largely ignores geographic separation.

edanto

Coming up with an original name would be the best way forward if the product is being developed at the moment.

I was assuming the OP's company is already trading with the product name and wants to protect it in the EU.

A TM can be registered in the EU if you are the first to register it in the particular class of goods, and I think it shouldn't matter that there is a US TM. It may come into play if there is an objection, but you are moving into the area where you need professional advice.

ambro25

millymash12 wrote: »

Hi

My company want to trade mark a brand name in Ireland, the UK and Europe. However there is a company in America that has already trademarked the name with a similar product range.

Is there anyway around this?

OP, ignore Graham's post.

The issue is nowhere near as clear-cut as checking whether someone else has been using the exact same mark before.

In principle, if the American company-

(i) has not registered that (US-) trade mark in Ireland and/or the UK and/or Europe or, failing that,

(ii) has not traded (at all, or much) under their (US-registered) mark in Ireland and/or the UK,

then you might be able to register the mark in Ireland and/or the UK and/or Europe (note that if you register at the European level, a registered Community Trade Mark ('CTM') covers Ireland and the UK, besides the other EU Member States).

In practice, your trade mark must first meet certain legal criteria (known as 'absolute'), before even considering the issue of prior rights (earlier TMs of others).

Next, and importantly, besides the the US company, others may have registered trade mark(s) that are, if not identical, then at least sufficiently similar to prevent registration.

In that context, there is also the question of any overlap between what these earlier tradee mark(s) are registered and used for, and what goods/services you will be marketing under the mark.

A strategic issue you have, and which this issue answers, is whether you may still be able to register your mark in the US (if your commercial development considers this), even though a company already owns a similar/identical registered US TM.

So, basically, you want a registrability check (can the mark be registered), then a clearance search (what earlier rights are there, which could cause problems). Then you can consider applying.

For the sake of honesty/disclosure, I am a trade mark attorney.

Graham

edanto wrote: »

Coming up with an original name would be the best way forward

Agreed. Even if it is possible to Trademark the existing name, how much business (internet traffic/SEO/marketing effort) is going to be wasted because of confusion with the existing US Trademarked product/service.

Graham

ambro25 wrote: »

OP, ignore Graham's post.

I'd be interested to hear which parts of my post you disagree with Ambro25.

ambro25

Graham wrote: »

I'd be interested to hear which parts of my post you disagree with Ambro25.

Unfortunately, all of it, because of the assumptions you have made.

Graham wrote: »

Am I missing something here?

Yes. Tons of details about the OP's business, its situation, its planned development, and the mark.

Graham wrote: »

Surely the point of a Trademark is to uniquely place your product/service in the market so it can't be confused with any other similar product/service?

Refer the above point.

Graham wrote: »

If that product/service is already being offered (all be it in a different geographic region) under the same name

You don't know that. Again, refer the above point.

Graham wrote: »

what's the point of registering the trademark?

Far too many answers possible to that one, beyond the usual 'textbook' reasons perceived by lay and/or business-inexperienced people. Again, refer the above point.

Graham wrote: »

Especially given the internet largely ignores geographic separation.

The Internet might. Customers habitually don't. But that's straying into interpreting a post, rather than providing some of the information the OP is after.

Just some pointers, which I now have some time to type (didn't earlier).

Graham

Accepted, I made assumptions when responding to the OP.

I made the assumption the OP was referring to the development of an ecommerce project referred to in a separate thread over the previous few days. I also made the assumption that an ecommerce solution with a trademarked name in the US would stand a reasonable chance of being confused with another ecommerce solution running under the same (but separately trademarked) name in the EU.