First of all, you should check if the trademark is registered for the same goods or services as you wish to use. If the goods or services are different, you can legally use the same mark. You also must check where the trademark is registered. The trademark rights are territorial, so if a trademark is valid in the US but not in Europe, you can use the same brand – and even register the same brand – in Europe.
However, if you have faced same or highly similar brand being registered in the relevant territory, you can try contacting the owner of the trademark and ask for a permission to use. It is quite possible and likable that the agreement will be reached. If there is no market competition between the two companies, another company can agree to let you use the same or similar brand. It is always advisable to ask!
Another possibility is to agree on the licensing of rights. A license is a permission by the owner of a trademark to another person or legal entity to perform, in the country and for the duration of the trademark rights, one or more trademark rights (use the mark, sell the goods with the mark, etc.). When that permission is given, a “license” has been granted. The legal document evidencing the permission given by the owner of the trademark is usually referred to as a “license contract” or, more simply yet, as a “license.” The licensing agreement can foresee the specific rights or full spectrum of rights given to a third party. In the agreement, the specific limitations, such as the scope of use (for example allow to use the trademark only for specific goods) or the scope of territory (only in US or EU) can be foreseen as well.
If the owner of the earlier mark doesn’t agree at all to give the permission to use a similar trademark, you are not able to register it. Unless you discover the grounds for earlier trademark cancellation (i.e. was registered in bad faith, has not been used in commerce for 5 or more years etc.), only the proprietor of the first mark has the rights to use it.
That is why we always advise preparing your homework before registering a trademark. You can check our Trademark Search service.
