The how and why of trademark watching

It is good practice to monitor trademark registries for potentially infringing trademark applications. The challenge is in developing the right watching strategy to avoid being swamped with results. Trademark Attorney Vanessa Harrow offers some advice.

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. In reality, however, 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, third-party trademark applications also need to be monitored against potentially infringing marks.

The importance of early detection

As with any type of trademark infringement or misuse, the earlier such applications are identified, the easier it is for companies to enforce their IP 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 some cases, such oppositions need to be filed within as little as 30 days from publication 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 acting against conflicting use and/or applications more widely (e.g. bad faith applications), and for building up evidence of misuse to be used when acting against such conflicts. Here, online trademark watching also plays a crucial role.

Trademark watching is also a useful way to generally monitor what competitors or third parties are doing, even if you do not intend to take action. For instance, by watching a competitor’s trademarks, you may be notified of a new application in a different market, thereby providing early detection that the competitor may be considering entering a new market. This can, of course, be beneficial information to help with your overall commercial strategy.  

Types of watching

Trademark watching will monitor for potentially conflicting applications and will typically take one of two forms:

• Identical trademark watch: Identifies marks or devices (e.g. logos) that are visually or phonetically identical; and
• Similar trademark watch: Identifies identical and confusingly similar marks,

Both of the above types of watches can be provided with or without opinion. Trademark watches 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. 

The geographical scope of the watch will be determined by the registers which are monitored. For example, a watching service could cover just one country, all countries in Europe or even be worldwide. 

What to watch

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. 

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.

Generally, watching services can cover plain word marks, stylised words and logos. If the visual impact of a trademark is particularly important, it is worth ensuring this element is captured by watching the stylised word or logo.

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.

Managing watching results

Companies with large trademark portfolios and broad watching strategies can find they are receiving vast amounts of watching data from their suppliers. Not only can this take them considerable time to sift through, but it also means they risk missing the important results. 

Opting for a trademark watch with opinion can help take the pressure off, as you will receive a first sift of results with the important notifications and deadlines highlighted for your attention.

Taking the time to clearly define the scope of the watching work in advance - for example, goods or services, competitors, markets or word elements to look out - will also help to focus the results.  

Vanessa Harrow is a Trademark Attorney in Novagraaf’s Manchester office.

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