Protecting Your Trademark From Infringements via Watch Services

So you’ve registered your trademark, but do you monitor to ensure there is no infringement occurring and to ensure others aren’t trying to register similar trademarks It is a trademark owners responsibility to monitor and enforce their rights, so it’s important that you monitor and watch for any activities that may be of concern, to ensure that steps can be taken to prevent infringement or similar trademarks from registering.

Where should you monitor?

There are two main areas to watch

Monitoring the Marketplace

The Internet can be your best friend in monitoring the marketplace for potential infringement of your registered trademark rights. Conducting searches via the likes of the Google internet search engine for the same and similar name to yours can help identify, early, other traders using names that may amount to a breach of your rights.

Consider also using Google Alerts, which can alert you when certain things pop up on the web – allowing you to be notified then of any content that may be published that features your trademark.

Monitoring Trademark Applications

It is also important to monitor trademark applications that may be filed in an area of interested that may be for similar trademarks to yours. If a similar trademark to yours is filed, you may be in a position to take steps to stop that trademark from becoming registered. If a similar mark makes it through to registration, then the owner is granted the statutory right to use their trademark for the goods/services nominated.

Once fully registered, the options to cancel the trademark would be limited and likely very costly – so, best to stop the application before it gets to that stage as it provides us the opportunity to do something about it earlier and in a far more cost effective way.

You can use the ATMOSS search tool to check for applications, and also the Official Journal of Trade Marks for dates that marks are advertised as accepted in order to formally oppose.

What if I find a similar trademark?

If you do find a similar trademark application filed, sometimes it is worth monitoring before taking further steps. We would typically look and see if that person has actually started using the mark or not. If not, and they’ve simply filed a trademark application we might suggest waiting until the application is examined by IP Australia. It may transpire that IP Australia issues a report suggesting that the trademark is too similar to yours, and, that person may abandon the trademark if they receive such a report. In that case, you would avoid the need (and cost) of further action.

If however a similar trademark is accepted for registration by IP Australia, you will have the opportunity at that time to file a formal opposition if you believe that similar mark should not be registered. Oppositions are complicated and we encourage seeking advice before launching an opposition to ensure there are reasonable grounds and prospects to succeed in that opposition. If you believe an opposition may be needed, please contact us or read our recent guide as to the process as a starting point.

If you find a similar brand in the marketplace, seek advice to determine if there is an infringement of your rights and if so, consider having a letter of demand sent on your behalf to the infringer. It’s important to keep in mind that sometimes what might look like a breach of your rights is actually not under the law so ensuring you’re in your rights to send a letter before doing so is important.

Consider at least whether the potential infringer is in the same country in which you have registered your trademark and whether they are using the trademark for the same sorts of products or services. Please contact our office if you need advice around a potential infringement of your trademark, or read this article for a few pointers to begin with.

How do I monitor and how often should I conduct checks?

Per above, monitoring the trademarks databases is a good place to start. The frequency will likely depend on the country you are interested in monitoring. In Australia, we suggest at least once a month. Our opposition period runs for two months in Australia, so, checking monthly will ensure you’re always seeing accepted marks that might be a concern to you with time available to file your opposition.

Alternatively, we can engage a ‘watch service’ through associates’ software. This can be done on a global basis, or specific to Australia. This will issue a notice any time a similar trade mark to the one we are ‘watching’ is accepted and advertised so as to allow a chance to oppose if needed. This can be a reasonably inexpensive option for a bit of peace of mind. You will only be notified then when there’s an approved mark of possible concern.

Or, we can perform manual monitoring on a monthly basis to consider the trademarks database for similar filings or approved trademarks, but also basic marketplace monitoring to ensure no-one is using infringing marks that need to be addressed.

What does trademark monitoring cost?

It will depend on the nature of monitoring you put in place, but as a guide through Mark My Words Trademark Services:

a) Watch service via associates’ software – Australia Only – AU$500 per year (not monthly report, only when similar mark worth reporting)

b) Actively monitor TM database in Australia for filings and accepted marks of similar nature to ‘watched’ mark (monthly report) – AU$400 per month/per trademark

c) Monitor TM database and basic online searches (business name, company name, directories or similar) to determine similar applications filed AND similar names used without filing TM – AU$800 per month/per mark

If you require watching on a global scale, please get in touch as we can provide an estimate for similar services for you.

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