A recognisable brand is among a business’s most valuable assets. It sets you apart from your competitors, enables consumers to easily identify and purchase your products and encourages loyalty. Once you have developed original, powerful branding, it is imperative to protect it as a trademark and subsequently enforce your mark against any third-party use. A failure to do so can lead to dilution, confusion in the marketplace and, ultimately, impact your profitability. The most straightforward way to carry out the requisite due diligence is through a trademark monitoring system.
What Is A Trademark?
Trademarks are part of a parcel of legal rights known as intellectual property rights. Often referred to as a badge of origin, a trademark gives its owner a monopoly over the mark in respect of the goods and services for which it is registered. Examples of well-known trademarks include Coca-Cola, Porsche and Kodak.
How Do You Register A Trademark?
In the UK, trademark applications must be lodged with the UK Intellectual Property Office (IPO), together with the appropriate fee. The IPO will check that the proposed mark fulfils the applicable legal criteria. Once satisfied, the IPO will issue a certification of registration and enter the mark into the trademark database.
When registering a trademark, you must select the goods or services for which you require protection. In the UK, goods and services are broken down into 45 classes and it is imperative that you choose the correct classes for your trademark. Music merchandising companies, for example, will require protection in all classes relevant to the goods they produce. This may include class 25 for clothing – band t-shirts and the like – and class 16, which covers printed material, including posters.
What Is A Trademark Monitoring System?
Registering your trademark is merely the first, albeit crucial, step in brand protection. Once you have obtained registration, you must keep a close eye out for any third-party trademark applications that may impact your rights. It is far easier to address any potential conflict at the application stage rather than further down the line when the third-party’s mark is already registered and in use.
The simple purpose of a trademark monitoring system is to consistently and proactively monitor any third-party trademark applications that may overlap with your own. Few businesses have the resources and time available to carry out the task, so most appoint expert trademark attorneys or solicitors to do it on their behalf.
For a small fee, your nominated trademark attorney or solicitor will search the trademark monitoring results and alert you to any applications they consider to be the same or confusingly similar to yours. They will present their findings as an easily digestible report and, if you feel the proposed mark is cause for concern, will advise on the best course of action in the circumstances.
You can limit the searches undertaken by your trademark monitoring system to specific marks, locations or classes, as appropriate.
What Action Can You Take If Your Trademark Monitoring System Alerts You To A Problematic Application?
If your trademark monitoring system identifies a third-party application for a mark that is the same or confusingly similar to yours, you have several options.
You may decide to take no action on the basis that you are confident that the proposed mark will not dilute your brand or cause confusion. You will, however, be alive to the presence of the mark and can monitor its owner’s commercial activities going forward.
You may choose to lodge a formal Opposition to the application with the IPO, requesting that the application be refused. Your Opposition must set out the nature of your rights and how the proposed mark would jeopardise them. A copy of your Opposition will be sent to the applicant who may then file a counterstatement defending their application. A cooling-off period ensues, during which you can explore the possibility of reaching a compromise with the applicant. If no compromise is reached, the issue will be decided by the Trademarks Tribunal.
Alternatively, you may think it best to approach the applicant with a view to entering into a ‘Co-existence Agreement’. Under a Co-existence Agreement, the parties agree to use their respective marks notwithstanding the similarities, subject to strict, mutually acceptable restrictions. For example, you may allow the applicant to use their mark within a carefully defined geographical area, or in a restricted category of goods or services.
A trademark monitoring system provides an efficient, cost-effective means of brand protection. For a small, often fixed, fee, your designated trademarks attorney will set up an appropriate monitoring system and proactively search the trademark monitoring results for any that might affect your registered trademarks rights. You can then work with your attorney to decide on a course of action that safeguards your legal rights and ensures the ongoing effectiveness of your brand.
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