The U.S. Supreme Court recently held that the provisions of the Lanham Act prohibiting trademark infringement and unfair competition are not extraterritorial and extend only to claims where the claimed infringing “use in commerce” occurs in the United States.
The decision, Abitron Austria GmbH, et al. v. Hetronic International, Inc., is a major setback for American brand owners by making it more difficult for them to protect their intellectual property from foreign competitors. In the past, they were able to rely on the Lanham Act to enforce their domestic trademarks against foreign companies that sold infringing products in other countries. The Abitron decision now forces domestic brand owners to seek alternative avenues to protect their trademarks.
According to IP attorney Robert Michaux, simply ignoring the impact of the Abitron decision is not a viable option for U.S. trademark owners with significant actual or potential foreign distribution channels. Click here to read his synopsis of the opinion and the next steps for these U.S. trademark owners. The Court’s opinion is available here.
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