I am having a registered trademark within the EU (2011) for a small online gaming project, which I have created privately.In the US there is a company with a product of the same type and the same name (still completly different logo). They also have a registered trademark (since around 2008), but only in the US.
However they are also advertising and selling their product online in europe.
Now I wonder if I could do anything against that, even though I am a private person and don't have a company as of yet?
And in reverse, can i get into copyright troubles when I start selling my game in europe?
Thanks in advance for your help, kind regards,
Intellectual Property Law Attorney
Don't overlook the obvious: Trademark rights created in one country END at the border of that country. If you have trademark rights in some nifty word, slogan, logo in Europe then congratulations. Someone else can use the exact same nifty word, slogan, or logo in Russia or China or Brazil or the U.S. or anywhere else. [Two exceptions: A European Union "Community" trademark registration is enforceable throughout Europe and, sometimes, a mark "famous" only outside the U.S. may be enforceable within the U.S.].
Yes, publishing a webpage via the internet publishes the trademarks on that page throughout the entire world. The consequence of that fact is NOT that the trademark owner's trademark rights exist -- let alone are enforceable -- worldwide. The consequence is that folks all over the world get to see how marketplace participants throughout the world brand and advertise their products. That's a good thing.
Let's assume Renault doesn't sell cars in the U.S. and, therefore, has no trademark rights in the U.S. for "Renault" to brand cars [and assume Renault is not a famous mark]. Can a person in Paris buy a model Renault car from a person in Chicago via the latter's website? Sure. The latter's branding of his model car "Renault" does not infringe the trademark rights Renault owns in France in "Renault."
The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
Patent Infringement Attorney
In the US, the answer probably depends upon whether you were using your product trademark prior to the issuance of their registration certificate. If they had a registered trademark in 2008 and you were not yet using your mark in interstate commerce, you would be vulnerable in the event the two trademarks are sufficiently similar to cause a likelihood of consumer confusion. On the other hand, if you were using the mark for your product prior to 2008, you may have protection in certain geographic areas where you are the "senior user" and the registrant is the "junior user."
Trademark Application Attorney
Depending on citizenship, there is the possibility of using your Community Trademark registration in the EU as the basis for a U.S. registration under the Madrid Protocol.
See: Section 66(a) of the Trademark Act permits the holder of an international registration to file a request for extension of protection of the international registration to the United States under the Madrid Protocol. See TMEP Chapter 1900 at http://tess2.uspto.gov/tmdb/tmep/1900.htm for further information about the Madrid Protocol.
You are probably going to need an attorney's help to sort this through. Find one that does international trademark filing.
These are ideas, not legal advice. By answering this question, I am not becoming your attorney. No attorney client relationship is intended by my answer. I cannot provide any real help without more details and establishing an atty/client relationship. There is no relationship established by my blog.
Intellectual Property Law Attorney
Trademark rights a primarily based upon use in commerce - not the existence of a registration. In certain instances (an intent-to-use application) the filing date of an application can set your priority date before your date of first use in commerce.
The statement of facts in your question is not entirely clear, but it appears that the other user began using their mark in the US at least as early as 2008 and you did not start use in the US, if at all, until afterwards. You also do not state when the other user began advertising and selling their product in Europe. Was it before you started using your mark? Was it before you filed for your EU registration?
If the names and goods are identical and the only difference is in the logo, you may have a likelihood of confusion problem with the other user. In either market, if the other user started using their mark before you either filed for trademark protection or started using your mark, then they would likely have seniority over you. You need to meet with a trademark attorney to review all of these and more issues before moving forward with your business.
Disclaimer: This answer does not constitute legal advice and does not create an attorney-client relationship. You should not rely on this answer to resolve your particular legal issue, since different laws are applicable in each jurisdiction, and each set of facts are specific to a particular situation. As with any legal question, you should consult with an attorney licensed in the appropriate jurisdiction to evaluate your particular legal problem following a comprehensive consultation and review of all the facts and documents.