With the rise of e-commerce and globalization, protecting your intellectual property assets becomes more important and defined.  However, the process of protecting your trademark overseas comes with unique challenges and new costs to consider.  The fact that you have a trademark registration in the United States does not ensure that your mark will be successfully registered overseas.

Take, for example, the National Basketball Association (“NBA”), which applied for trademark protection in the European Union in 2013 to protect the logo for the New Orleans Pelicans.  This application covered three international classes for paper products, clothing, and sporting goods.

However, this application was blocked by a German company named Pelikan Vertriebsgesellschaft (“Pelikan”), who filed a notice of opposition due to its belief that customers would face a “likelihood of confusion” when the two marks were compared, the commonality being that both marks featured an image of a pelican.  This opposition came even though Pelikan offered office products unrelated to the NBA goods.

The initial opposition was upheld by the European Union Opposition Division, who ruled in Pelikan’s favor. After the block, the NBA appealed the decision, resulting in an annulment of the Opposition Division’s original decision.  The Appeals Court stated that the marks were not similar, would not create confusion and, funnily enough, that the New Orleans Pelicans’ mark featured an “angry-looking bird” (not necessarily a pelican).

Pelikan attempted a rebound and claimed that the logo indeed represented a pelican, which would create confusion among consumers.  On September 12, 2018, the General Court ruled against Pelikan’s latest opposition attempt, holding that the words “New Orleans” in the NBA’s mark were the dominant features of the mark, and that the word “Pelicans” worked as more of a bench warmer in the logo, as it was not as prominent.

In contrast to American law, Pelikan was ordered to pay the costs of the appeal.  This difference between legal systems is striking, as costs are normally borne by each party in the United States.  This decision highlights the importance of seeking registration in any country in which the product might be marketed and/or sold and preparing to defend that mark, if necessary.  Our lawyers at Dunlap, Bennett & Ludwig can assist you with securing international trademarks so that your trademarked goods are protected, no matter where your business might sell so you do not need to sweat over these details.

Author: Ashley Barendse, Trademark Attorney
Dunlap Bennett & Ludwig, PLLC

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Posted in: Trademark

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