Trademark watching: the how and the why
Most companies already understand the benefits of registering corporate brands as trademarks in the countries and regions in which they trade, manufacture and transport their products. But, in reality, registration is only the first step in the effective use and protection of a chosen brand, company or product name. In order to ensure that valuable marks are fully protected and enforced, they also need to be monitored for unauthorised and potentially damaging use.
The importance of early detection
The earlier trademark infringement or misuse is identified, the easier it is for companies to enforce their trademark rights. This is particularly the case where a third party is seeking to register a potentially conflicting trademark, as brand owners with prior rights need to adhere to strict deadlines for submitting objections (or oppositions) to challenge such registrations.
In general, such oppositions need to be filed within two months of the attempted registration of a potentially conflicting trademark. If that deadline is missed, it will still be possible to challenge the trademark registration; however, it will be more costly and difficult to do so.
Early detection is also important when it comes to identifying and monitoring markets or brands at risk (for example, of counterfeit activity) and for building up evidence of misuse to be used when acting against such infringements. Here, online trademark watching also plays a crucial role.
How to develop an effective watching strategy
Trademark watching is an important tool in the proactive monitoring of registered marks and devices, helping companies to identify and act against infringement and misuse of trademarks in a timely manner. However, to be truly effective, a trademark strategy needs to take into account the size and reach of the brand owner’s portfolio.
If a company owns a sizeable portfolio and trades globally, it may not be possible or cost-effective to watch every trademark in every jurisdiction. Where that’s the case, it should seek to prioritise its efforts by identifying and prioritising core brands and core jurisdictions that warrant complete protection, as opposed to the ‘nice-to-have’ or secondary brands – bearing in mind that those brands may also become core in future.
What to watch
Whether managed in-house or outsourced to a specialist, a brand owner’s trademark watching strategy should ideally cover all relevant trademark registers to identify applications for identical and similar trademarks, as well as wider internet monitoring; for example, to identify the sale of counterfeit goods on auction and social media sites, and other possible damage to a brand or reputation.
Trademark watching to monitor for potentially conflicting applications will typically take one of three forms:
- Identical trademark watch: Identifies marks or devices (e.g. logos) that are visually or phonetically identical;
- Similar trademark watch: Identifies identical and confusingly similar marks;
- Trademark watch with opinion: Includes an attorney's recommendation on the results of the identical or similar trademark watch based on their consideration of prior rights and the likely impact on a business and its market share.
Monitoring rights online
Online watching services deliver a similar service, but on the wider internet. Based on trademarks and other specified keywords, the services monitor the web, including online message boards and auction sites, to identify instances of infringement, counterfeit activity and other possible threats. Again, such services need to be designed with a company’s core trademark rights in mind.
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