Trademark enforcement strategies for brand owners
A registered mark offers defensive and offensive possibilities, but how and where should you start? Bart Schweitzer outlines trademark enforcement strategies for brand owners.
While unregistered trademarks do provide brand owners with some protection, it is advisable to register your chosen brand name(s) in all relevant territories as early as possible. Not only do registered trademarks hold considerable financial value, but they also provide brand owners with important defensive and offensive possibilities.
Defensively, an older registration will take precedence over a younger mark. This means you can use your mark without the risk of being accused of trademark infringement by a newer brand. Offensively, you can use your registration to block a younger brand from registering or using an identical or similar trademark for identical or similar goods and/or services.
Trademark owners should also use their registrations to prevent:
- Their brands from being diluted (becoming less exclusive),
- Third parties with similar trademarks unjustifiably benefiting from associated reputation and goodwill (“free riding”),
- The sale of counterfeit products, and
- The unauthorised distribution or resale of official products, leading to reputational damage.
How to create effective trademark enforcement strategies
Novagraaf offers a range of services to enable brand owners to establish and implement effective trademark enforcement strategies, including:
- Monitoring services: Customisable, automated services that identify and report new applications for similar trademarks in specific markets or by specific competitors, enabling oppositions to be filed in a timely manner (if necessary). Find out more about the opposition process
- Trademark search services: Backed by cutting-edge trademark search software, our experts identify conflicting marks in relevant trademark registers. Find out more about trademark searching
- Online brand use monitoring services: Benefit from periodic overviews of potential online use and misuse of your brands, for example on e-commerce marketplaces, such as eBay, Amazon and Alibaba, and on social media sites, such as Instagram, TikTok, YouTube and X. Find out more about online monitoring
- Letters before action: Cease-and-desist/demand letters can often lead to a solution, a conversation or a settlement, such as the withdrawal of a trademark application or the cessation of a trademark's use. Find out more about online enforcement
- Administrative procedures: We support clients with oppositions, cancellation requests, domain name disputes, and more. See our full range of trademark support services
- Litigation/legal proceedings: From infringement actions to seizure and damages, we provide clients with guidance on pre- and post-litigation for trademark and design infringement actions. See our full range of trademark legal services
- Customs enforcement: Filing Applications for Action (AFAs) helps customs to proactively detect your brand and seize and report any infringements. Find out more about Customs enforcement
- Online brand protection: Automated online monitoring of brand use and enforcement through notice and takedown systems, including against tracked ads, social media posts or websites. Find out more about our Online Brand Protection tool
Protect and enforce your trademark, design and domain name rights cost-effectively by getting the strategic support you need today. Speak to your Novagraaf attorney to find out more or contact our team.
Bart Schweitzer is a certified Benelux and European Trademark Attorney at Novagraaf in Amsterdam.