The U.S. Supreme Court’s decision in Abitron Austria GmbH v. Hetronic International Inc. will make it more difficult for U.S.-based brand owners to shut down counterfeits and trademark infringement abroad.
Given that many brands have a global presence — and that counterfeiting and infringement is on the rise, especially overseas — businesses need to adjust brand protection strategies now.
In the Abitron decision, the Supreme Court vacated a $96 million judgment granted to U.S.-based Hetronic for sales of infringing products by Abitron to predominantly European customers. Prior to that decision, U.S.-based businesses often filed lawsuits in U.S. courts on the basis of overseas infringement of U.S. trademark rights.
Now, it is unclear what foreign activity will qualify as infringement of U.S. trademark rights, and whether that infringement can be resolved in U.S. courts. It will take time for lower courts to interpret and apply the Supreme Court’s holding, but the message to businesses is clear: Brand owners cannot necessarily rely on U.S. trademark rights, or U.S. courts, to remedy infringement where some or all of the infringement takes place in a foreign country.
How should global brand owners respond?
Secure trademark protection in the foreign countries in which they provide goods and services. The good news? International treaties make obtaining trademark protection in most foreign countries a straightforward, cost-effective and relatively painless process. For example, through a single filing with the World Intellectual Property Office, a U.S. business may apply to register its trademark in more than 128 countries.
Of course, each business will need an individualized approach to foreign trademark protection that factors in, among other things, the markets in which the business operates, the trademarks under which the business provides its goods and services, and budgetary considerations. At a high level, however, businesses seeking to curtail foreign counterfeiting and protect their trademarks abroad should consider following general approach:
Identify the marks under which the business’s goods and services are or will be offered. Consider not just the name of the business, but also product names, taglines and slogans.
If the business has not already done so, apply to register its trademarks in the U.S. Applying to register a mark in foreign countries via World Intellectual Property Office requires an existing trademark application or registration in the business’s home country.
Identify the foreign countries in which the business does, or intends to do, significant business. Many countries are so-called “first to file” countries, meaning that the first party to apply to register a mark in that country generally obtains priority rights — and no prior use of the mark in that country is required. In those countries, a business can protect its mark even if it has not yet begun using its mark there.
Apply to register the business’s marks in foreign countries of interest via a single World Intellectual Property Office filing. In countries that have not yet signed on to the relevant treaty (for example, Taiwan), the business will be required to file an application directly with that country’s trademark office.
The business’s U.S. trademark lawyer can engage trusted lawyers located to such countries, and rely on those foreign lawyers to file applications there.
Record with U.S. Customs and Border Protection (CBP) the business’s trademark registrations for products at risk of international counterfeiting.
Doing so assists CBP to detain and seize any imported goods that violate the business’s registered trademarks, and is an im portant and low-cost measure to take if the business’s goods will cross U.S. borders.
Use one of the many cost-effective trademark watch notice services, which will alert the business of any U.S. or foreign trademark applications for marks that are confusingly similar to the business’s marks.
Doing so allows the business to take prompt and targeted action against potential infringers, which in many cases is enough to prevent wide-scale infringement and counterfeiting before it starts.
Work with an experienced trademark lawyer to protect and enforce the business’s trademark rights in the U.S. and abroad. Not only will that lawyer navigate what can be an unintuitive trademark application process, but can also track and notify the business of what will likely be a myriad of inconsistent deadlines related to the applications.
When necessary that lawyer can act against counterfeiting and infringement, bring in qualified foreign lawyers as necessary, and otherwise ensure that the business’s global trademark protection and enforcement procedures are complete and effective.
Brian Thomas is a shareholder at Sheehan Phinney. As an intellectual property attorney and business litigator, he helps entrepreneurs and organization establish, protect and enforce their intellectual property in the United States and abroad..
