The November – December issue of INTA’s The Trademark Reporter features an informative piece by Ann Gilson LaLonde (link available from the Trademark Blog here ) about the scope of protection afforded by US courts to famous marks not used in the United States. Apparently, the federal US courts seem to be divided on the issue, while the Trademark Trial and Appeal Board (TTAB) favors the protection of not-used-yet-famous in the US marks. The author concludes that:

"Well-known foreign marks cases have presented United States courts with a dilemma. On the one hand, they may condemn in the strongest terms a business that, with knowledge of another’s use, blatantly proceeds to use the identical mark commercially to capitalize on its renown. On the other hand, they are faced with well-established territorial trademark law holding that trademarks are not protectable without rights established through actual use. The force in the United States of international treaties declaring an exception to the territoriality principle stands on shaky ground at the moment, and, after a circuit split, the United States Supreme Court has chosen not to address the issues involved.”

and proposes federal legislative initiative to tackle the problem. Some thousand miles away, in Greece, there have been instances where the courts did accept the protection of “foreign” famous marks not used (or registered) in Greece and the relevant case law should be considered settled. Two strong US marks benefiting from and being responsible for this case law were amazon and Hard Rock Café. This blogger wonders whether the law is the same around our old continent. You can place your comments or e-mail me.