Does a US trademark have any standing in other countries?
Does a US trademark have any real "juice" in other countries? I understand the US has reciprocal IP treaties all around the world, but if I trademark shmink-shmornk in the US, can I really prevent a shmink-shmornk popping up in Germany in the same industry? Or would I have to go through a trademark registration process in every country I planned to do business to reasonably protect the name?
(Please note shmink-shmornk was meant to be an example, not a testament to my branding skills.)
Good Answers (3)
Dear Rex,
apart from cases of well-known trade marks, you have a six-month priority period throughout all the countries that signed the Paris Convention. (i.e. 90 % of the "well-off" countries)
The afore-mentioned 6 months start from the date of your application and during such period you have a priority right in all those Member States (provided that there were no previous equal or confoundable trade marks in those other countries).
Once this time elapses you have no right to prevent let's say another "shmink-shmornk" popping up in Germany in the very same industries.
So that, if you're planning to extend your monopoly right, you should better claim your priority (in those countries where you can imagine a market for your "shmink-shmornk "'s G&S).
Warm regards and good luck.
Cristiano
Although you can use a U.S. trademark application or registration as the basis for a filing in a foreign country, you must use or register in a foreign country to protect the trademark. The laws of each country will control the scope of rights and avenues for enforcement.
Also see http://www.wipo.int/trademarks/en/, which has a link you can click to the application for the Madrid System for the international registration of Marks - all participating countries use the same single application. That may help. The WIPO, the World IP Org., has other useful links on the page. Or go to the main WIPO page at www.wipo.int and and click on the Resources for Innovators link.
