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  • Writer's pictureDavid Baker

SCOTUS: U.S. Trademark Law Only Protects U.S. Trademarks

Updated: Aug 31, 2023

Supreme Court rules against extraterritorial enforcement for trademark infringement.

Recently, the U.S. Supreme Court addressed the issue of extraterritorial trademark infringement and its implications for the protection of trademarks in the United States. The case, Abitron Austria GmbH et al. v. Hetronic Int'l, Inc., examined the territorial reach of the Lanham Act, the federal trademark statute.

In Abitron v. Hetronic case, Hetronic, a U.S.-based company, accused Abitron, a former licensed distributor, of trademark violations under the Lanham Act. Hetronic claimed that Abitron had engaged in infringing activities by selling Hetronic's products, primarily in Europe but with some direct sales into the United States. The lower court ruled in favor of Hetronic, granting damages and a permanent injunction against Abitron's global use of Hetronic's trademarks. However, the Supreme Court disagreed with the lower court's decision.

The Presumption Against Extraterritoriality: The Supreme Court applied the "presumption against extraterritoriality" to analyze the Lanham Act's territorial reach. This presumption requires clear evidence of Congress's intent to apply a statute to foreign acts or omissions. The court concluded that the relevant sections of the Lanham Act, prohibiting trademark infringement, extend only to claims where the infringing use is domestic. The phrase "in commerce" within the Lanham Act was interpreted to refer to "commerce which may be lawfully regulated by Congress." Thus, the Lanham Act's jurisdiction is limited to domestic trademark infringement occurring in the United States.

Why It Matters.

The ruling in Abitron v. Hetronic has significant implications for businesses involved in international trademark disputes. It establishes that possessing U.S. trademark rights alone is insufficient to address foreign infringement or seek damages for foreign infringing activity in U.S. courts. In such cases, businesses must pursue legal action in the foreign jurisdictions where the infringing activity takes place.

To navigate the challenges posed by extraterritorial trademark infringement, businesses should implement a robust brand protection strategy that encompasses both domestic and international markets. Here are some key considerations:

  1. Register Trademarks in Foreign Jurisdictions. To strengthen protection, businesses should consider registering their trademarks in the foreign jurisdictions where they operate or license their marks. This proactive approach helps safeguard against potential infringement and strengthens legal remedies abroad.

  2. Vigilant Monitoring of Foreign Markets. Regular monitoring of foreign markets is crucial to identify any potential infringing activities. Businesses can employ various tools and resources to track the use of potentially infringing marks and promptly take action to protect their rights.

  3. Collaboration with Legal Experts. Working closely with experienced trademark attorneys can help businesses develop a comprehensive trademark protection and enforcement strategy. Legal professionals can provide guidance on navigating the complexities of international trademark law, assist with filing applications in foreign jurisdictions, and handle dispute resolution effectively.

The Supreme Court's ruling in Abitron v. Hetronic clarifies the limitations of the Lanham Act's territorial reach in cases of extraterritorial trademark infringement. Businesses must recognize that relying solely on U.S. trademark rights may not provide adequate protection against foreign infringement. By implementing a comprehensive brand protection strategy, including registering trademarks in foreign jurisdictions and vigilantly monitoring international markets, businesses can better position themselves to address potential infringements and protect their intellectual property globally. Collaborating with experienced trademark attorneys is crucial to navigating the complexities of international trademark law effectively and safeguarding valuable brand assets.

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