Businesses marketing their products under one mark in the United States and a different mark in other countries may have a new weapon against American competitors. Previously, it was understood that to stop competing use of a foreign mark in the United States, there must have been use of the foreign mark in the United States as well. Now, a federal appeals court based in Virginia (the Fourth Circuit) has broadened the ability to stop competitor use of a foreign mark in the United States. In the case Belmora LL v. Bayer Consumer Care AG, No. 15-1335 (4th Cir. 2016), the court held that section 43 of the Lanham Act does not require prior use of a trademark in the United States before suing for unfair competition in the United States.
The case involved the FLANAX mark used in connection with the sale of naproxen sodium tablets in Mexico, including communities bordering the United States, since 1976. While the FLANAX mark was well known not only in Mexico but also by Mexican-Americans in the United States, the mark itself was never used on products sold in the United States. In the United States, the same company (through its corporate affiliate) used the brand ALEVE to sell the same naproxen sodium tablets. In 2004, a competitor began selling naproxen sodium tablets in the United States under the mark FLANAX, and with similar packaging to that used in Mexico by the competing company. It suggested in its advertising that it was the same product that had been marketed in Mexico for decades.
