Mon 17th Oct 2016
Protecting your brand with a watching service to monitor trade marks, company names and domain names
Protecting the uniqueness of your brand is important if you wish to preserve its value and reduce the risk of market erosion from competitors. It is therefore advisable to look out for any other trade mark applications, company names and domain names that are similar to yours and might cause concern.
The most effective way to protect your intellectual property is to set up a watching service to ensure that you are alerted to applications by others and then you can choose whether, or not, to object to them.
What is the scope of a watching service?
You can control the scope of the watching service by reference to the number of marks that you watch, the geographical extent of the watch and the number of class categories in which you watch. It is less beneficial to maintain watches where you have no rights to enforce.
How does the trade mark monitoring process work?
Having set up a watch, we receive notices of applications, often on a daily basis and filter these for the significant and relevant ones. We then forward details to you, so that you can assess the potential threat to your brand. If one is of concern, we can advise on the merits and, if you wish, we can oppose the trade mark application on your behalf. In most countries, there is a procedure for opposing an application based on earlier trade mark rights.
The advantage of early action
One good feature of a trade mark watching service is that it often picks up new brands at the start of their lives, when applicants are less committed to the brand and so more inclined to limit its scope, or drop it. This is much better than having a situation where reliance is placed on consumers alerting you to similar brands, or brands being noticed on the internet, when already established.
Is it possible to monitor the trade mark applications of a competitor?
Yes, it is possible to set up a watch on a particular competitor to look for all trade mark applications of theirs in a particular country, or worldwide.
Is it possible to monitor new company names?
It is also possible to monitor new company names in the UK. Early action is most beneficial as owners are more inclined to change a company name when it has not been established in the market. You then have the options of objecting by way of court proceedings, or by objecting to a name that is opportunistic, abusive, or too near an existing name under the Companies Act.
There are procedures for objecting to opportunistic company names at the Intellectual Property Office.
Is it possible to monitor new domain names?
We can also monitor domain names being applied for, including renewals. Watches can be set up for WHOIS changes, web page changes, reverse WHOIS reports and keywords on search engines, such as Yahoo, Bing and Google.
What happens if I do not monitor later trade mark applications?
This varies according to the geographical markets in which you operate. In some countries, such as the US, governments still refuse later applications for similar marks, but you must have an earlier mark in that Register, and are reliant on their discretion and their opinion as to similarity.
Currently, the UK Intellectual Property Office notifies the holders of earlier UK marks of what it considers to be similar UK applications, but they do not notify UK mark holders of later EU trade mark applications.
The EU Trade Mark Office notifies the holders of later EU applications at its discretion, but does not notify holders of national rights, such as in Germany, France, Spain, of later EU applications, and you are reliant upon its discretion and reliability.
In summary, having a watching service provides the information that you need to decide whether, or not, to raise an objection. This, in turn, helps you build a stronger and more unique, distinctive and valuable brand, so that your existing and new consumers can find your product and make purchases without being confused and tempted by conflicting, similar brands. We recommend the setting up of watching services, where you have trade mark rights that you can enforce.
What are the costs?
The cost depends upon the number of brands, the geographical extent of the watch and the number of class categories. If you provide us with details of the brands, goods of possible interest and countries of possible interest, we can give you cost estimates of various options.
This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis and answer any questions you receive from others about Brexit. Please note that the law may have changed since the date this was first published in October 2016.