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Watching service - keeping an eye on trade marks

By Sarah Chatterley.

Now more than ever, it is important that a trade mark owner watches markets and monitors Trade Mark Registers which are most relevant to their present and planned future business. 

Where previously trade mark Examiners would refuse to register marks because of the existence of previous registrations, it is now the trade mark owner’s responsibility to police their mark on the registers and in the market place, and to take action as a result of uncovering a third party who's commercial activities may potentially “tread on their toes”.

Trade mark watching services monitor registers for identical or confusingly similar marks filed by third parties for identical or similar goods and services.  This serves two purposes:

  • Notification of the existence of a trade mark application gives you the opportunity to object to its acceptance, therefore potentially preventing it from even being allowed to register; and
  • It alerts you to possible use of the trade mark in a market by companies likely to be competitors.

Keeping an eye on the market and on the Trade Mark Registers maintains the value of your trade mark and prevents its strength from being diluted by prolonged unauthorized and uncontested use.  Contact with the owner of a later filed or used trade mark may also be a means to generate money: as part of an agreement not to take legal action to stop their use, it may be possible to arrange a licence for acknowledgement of the mark as being your property (and for them not to register it), and for the generation of a revenue stream through a royalty.

Watching services can also be used to monitor the activities of your competitors. This will alert you to any new marks, products or services they are launching, and also when they start moving into new territories. Trade mark watches can be set-up for selected countries, for example, in one territory only, the EU territories, or worldwide. 

Please let us know if you would like more details on subscribing to a watching service.  

This news item may contain information of general interest about current legal issues, but does not contain legal advice.