So, you have a trademark registered and you find out that somebody overseas is using the same one, what can you do?
Unfortunately not much, unless there’s some kind of relationship between the two of you, such as if they’re a former employee or a former distributor. If you’re based in Australia and somebody in America uses the same name as you, if you’ve got yours registered as a trademark, your trademark protection here in Australia doesn’t cover you for the U.S. So remember when you’re getting your trademark protection, to always think about the countries that you are going to need to get protection in, the countries that you might want to extend to, or the countries where if somebody else was using your trademark in those countries, it would cause you difficulties.
Now remember most countries have got a use requirement, so if you don’t actually use it in the country, it can get removed. In the U.S. after a couple of years, you actually have to prove you have used it. So you can’t just file everywhere and hope to keep people out of the market. But if you filed in a particular country and somebody else is using the same thing somewhere else, that’s not gonna help you.
The only situation in which you can stop someone from using your trademark somewhere else, is if they are expanding into your country where you’ve got your trademark registration or even selling from their country into your trademark registration country. So say you’ve got it registered in Australia and somebody in the U.S. starts importing the clothing into Australia and part of the website is aimed at Australians. There is case law that says that if a website is aimed at or created in such a way to attract people from a particular country, then that is considered used in that country. So if the U.S. website is specifically designed to attract Australian customers and they are actually selling into Australia, then that is something that you could potentially action against. My name is Cathryn Warburton, and I am the Legal Lioness.
