How and Why of Trademark Watching

How and Why of Trademark Watching

The majority of companies are aware of the benefits of registering their corporate brands as trademarks in the countries and regions where their products are traded, manufactured, and transported. The truth is, however, that registering a brand, company, or product name is only the first step in its effective use and protection. Monitoring for unauthorized and potentially damaging uses of valuable marks is also crucial to ensuring their full protection and enforcement.

Early Detection is Crucial

Identifying trademark infringement or misuse early will enable companies to enforce their trademark rights in a more effective manner. Brand owners with prior rights are required to submit objections (or oppositions) to such registrations within strict deadlines if a third party is attempting to register a trademark that may conflict with their own.

It is generally necessary to file such opposition within two months of the attempted registration of a potentially conflicting trademark. However, it will be more difficult and expensive to challenge trademark registration if the deadline is missed.

The early detection of such infringements is crucial for identifying and monitoring markets or brands at risk (such as a counterfeit activity) and for building evidence of misuse that can be used to fight them. Also crucial here is online trademark monitoring.

Developing An Effective Strategy For Watching

As a proactive monitoring tool, trademark watching is important for identifying and taking action on infringement and misuse of registered marks and devices in a timely manner. The size and reach of the brand owner’s portfolio must be considered in a trademark strategy in order to be truly effective.

In the event that a company has a large portfolio and trades globally, it may not be possible or cost-effective to monitor every trademark in every jurisdiction. The company should focus its efforts on the core brands and core jurisdictions that warrant complete protection, rather than the ‘nice-to-have’ or secondary brands.

Here’s What To Watch

A brand owner’s trademark watching strategy should ideally cover all relevant trademark registers, whether it is managed in-house or outsourced to a specialist to identify applications for identical and similar trademarks, as well as broad internet monitoring; for example, to identify counterfeit goods being sold on auction websites and social media sites as well as any possible damage to a brand or reputation.

One of three types of trademark watch is usually used to monitor for potentially conflicting applications:

  • Watch for identical trademarks: Identifies trademarks or devices (e.g. logos) with the same visual or phonetic characteristics;
  • Watch for similar trademarks: Identifies identical and confusingly similar marks;
  • Watch for identical or similar trademarks with an attorney’s opinion: Based on the lawyer’s consideration of prior rights and the likely impact on a business’s market share, he can provide an opinion.

Online Monitoring of Rights

It is similar to online watching services, except that they are available over the internet, so you can use them at your convenience. It monitors the web, including online message boards and auction sites, for instances of infringement, counterfeiting, and other potential threats, based on trademarks and other specified keywords. It is important for such services to be designed with the core trademark rights of a company in mind as well.

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