Trademark monitoring: How to protect your trademark rights

When it comes to trademark monitoring, two types of trademark watching exist to help brand owners to protect their rights: Trademark watching for conflicting trademark registrations and keyword monitoring for unauthorised use of brand rights online. We explain why these services are so important and how they work. 

Trademark holders are constantly battling to safeguard their valuable trademark rights. On the one hand, there is the risk that a third party will seek to register a brand name that is identical or confusingly similar to another company's registered trademarks for similar goods or services. On the other, there is a vast and growing market for counterfeit and pirated goods online. Fortunately, dedicated services and software exist to notify trademark owners of potentially conflicting use in both these channels and to support them to take effective action.

Trademark monitoring: Hands off my mark!

Trademark watching is vital for the proactive monitoring of registered trademarks. By notifying you of new applications for potentially conflicting marks promptly, you will have the time you need to oppose their registration.

If you have an active trademark watching service in place, you will be notified of the publication of a conflicting trademark application by the relevant trademark office(s). As the first course of action, the applicant can be written to and asked to withdraw the application (and stop using the mark). The next step is to formally lodge an opposition at the relevant trademark office; for example, on the basis that the contested mark is identical or confusingly similar to your earlier rights. 

In most territories, the opposition procedure is entirely administrative and conducted solely in writing, although oral hearings can be requested in certain jurisdictions (such as the UK). In this respect, bringing a trademark opposition is different and much more cost-effective than litigating trademark infringement before the national courts. 

Given the short period allocated to bring an opposition action, it's important to act promptly. For additional insight here, read our article 'Trademark tips: Understanding the opposition procedure'.

Trademark infringement online

Online brand protection services work in a similar way to trademark watching, only they inform you of trademark use online rather than of potentially conflicting applications to the national trademark registration systems. Such services will pick up unauthorised use of your trademarks and brand names across the internet (including apps and social media sites) and counterfeit and grey market goods sold without your permission online. 

For the most efficient online brand protection strategy, it is advisable to work with a provider who combines monitoring technology with automated workflows (e.g. to facilitate bulk takedowns) and legal advice. Read our article ‘The art of online brand protection’ to find out more. 

Trademark infringement and Google Ads

Did you know that you could be infringing another company's trademark rights if you use their trademark in the title or meta description of a sponsored advertisement on Google without a valid reason? For example, if your ad text suggests you are in a commercial relationship with the other brand, you could be challenged on the basis that you are seeking to 'ride on the coattails' of their reputation. 

Find out more about trademark protection

The first step of any effective trademark protection strategy is to obtain the necessary trademark registration. Download our '7 steps to creating a strong brand' for a handy guide on choosing the right trademark(s) and protecting them in the markets that are most valuable for your business.

For further guidance, including support for opposition proceedings, contact your Novagraaf attorney or get in touch below.