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Author Topic: From US, do I have any rights over TM name in Europe?  (Read 680 times)

PHInventor

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I have clear rights to a US trademark name (as per USPTO), and also have patents filed overseas on my product.  It may take another year or so until the product shows sufficient US sales to attract a good overseas investor / licensee.  At that time I would be glad to file the European TM costs, but for now I need to conserve funds. For various reasons the name really needs to be the same in the US and overseas.

I am concerned about a competitor in my art area buying the European TM based on my US name, and using the European TM name to cannibalize my sales. I am also concerned about a "trademark troll" holding the name and offering to sell / license it to me for an exorbitant cost.

Under each of these scenarios, what rights, if any, and for how long, would I have to a European-wide TM under my US trademark name? 

Thanks.
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BSZ

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Re: From US, do I have any rights over TM name in Europe?
« Reply #1 on: 02-23-12 at 01:18 am »

According to "Paris Convention", you could claim priority in your CTM application based on US TM application. The deadline is 6 months from the US filing date, for example if your US TM was filed at Jan.1st, 2012, so you must file your CTM application before July 1st, 2012 to claim your priority.
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BSZ
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Re: From US, do I have any rights over TM name in Europe?
« Reply #2 on: 05-28-12 at 01:38 pm »

You could also try the route we went: Heavy online usage, targeting as many of those countries as possible. We are taking advantage of Google Chrome which translates automatically, and we also are paying human translators for key parts of our IP to be posted in the pertinent languages.

My understanding is that the more specific your online activity is to a pertinent country, the more your TM will stand up to their common law.
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