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. Here are five tips for getting started or revising your current strategy.
1. Get the rights in place Your trademarks serve as a badge of origin for your business and its brands and products, and are valuable business assets. A valid trademark right will enable you to prevent others from copying or otherwise taking advantage of the goodwill in your brand or company name. Consider registering as a trademark any word, sign, symbol or graphic that you apply to your company, goods or services to distinguish them from those of your competitors; for example, a brand, product or company name, or logo. Rights are territorial, so you may need to extend registration to cover all the countries and regions in which you trade, manufacture or transport your products. (Find out more about trademark registration.)
2. Prioritise between core and non-core If your company owns a sizeable trademark portfolio and trades globally, it may not be possible or cost-effective to watch every trademark in every jurisdiction. Where that’s the case, you should seek to prioritise your efforts by identifying and focusing on core brands and core jurisdictions that warrant complete protection. Secondary or ‘nice-to-have’ marks may warrant lesser attention (budgetary or otherwise); although bear in mind that some of those brands may also become core in future.
3. Develop a watching strategy 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. This 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.
4. Monitor your rights online Consider extending your trademark watching strategy to cover the web, including social media platforms. Online monitoring services trawl the web, including online message boards and auction sites, to identify instances of infringement, counterfeit activity and other possible threats to a brand or reputation for specified trademarks and keywords. Again, such services need to be designed with a company’s core trademark rights in mind.
5. Create a response plan To be effective, a trademark watching programme needs to be accompanied by an action plan for responding to infringement once it has been identified. 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. 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.
Helene Whelbourn is a trademark attorney at Novagraaf UK.