Monitoring new application:
In order to make sure your valuable marks are protected; brand owners need to monitor new applications to ensure that those potential trademarks don’t infringe or potentially damage your existing rights. Trademark monitoring plays a vital role in such early detection of infringement. The early detection of potentially conflicting trademarks is an important part of the trademark protection strategy, but it is particularly necessary if you are to meet the deadlines associated with submitting objections to an attempted registration by a third party. Such oppositions need to be filed within a specific period of time (before two months from publication of the attempted registration). Challenging the trademark after registration is normally a far more costly affair.
It generally consumes more court hearings and loss in your business the infringement had or will cause. So, it is better to apply any infringement as early as possible. Monitoring services are normally categorized into the following:
- Identical trademark watch: Identifies marks or elements (e.g. logos) that are visually or phonetically identical to your mark;
- Similar trademark watch: Identifies identical and confusingly similar marks to your original marks.
Both of the above types of monitoring techniques can be provided with or without any opinion. Trademark watches with opinion includes an attorney’s recommendation on the results of the identical or similar trademark monitoring based on their consideration of prior rights and the likely impact it is going to have on their business. If you have an active monitoring service in place, when a conflicting trademark is being published, you will be notified to allow a decision to be made as to whether you will oppose immediately. As mentioned earlier, the window for bringing such actions is pretty short and taking timely actions are therefore pivotal.
Raising an objection is always your choice when you’re going to file the objection may solely depend on your business strategy, sometimes few companies apply infringement late to be reimbursed big. Some businesses take a very aggressive approach to infringements and will raise objections to any sort of potential conflict, no matter how small they may be. Raising objections normally depends on the following few reasons:
- The scope of their earlier rights;
- The level of similarity between the new trademark and the trademark they possess earlier brand;
- Whether the common elements within the marks are quite descriptive or common to their respective trades;
- The nature of the product or services covered by the trademarks and those which are in use in the market;
- The identity of a third-party applicant and the scope of their existing protection in their relevant country or elsewhere;
- The potential impact the new trademark would have on your existing brand and business; and
- Whether there is any vulnerability of their earlier rights (e.g. subject to non-use cancellation and not used for all the goods/services) and the risk of being counterattacked by the new brand later.
These 7 points cover mostly all possible reasons, but one other point is a much more a personal reason if someone you know or was involved in your own business go on and start a similar business with a similar name and logo just to bring you a competition. They are to be dealt with immediately and strategically. The law always favours the one who has applied for the trademark first, so if the trademark is in your hand then you are probably holding all the ace cards.
How to proceed and handle the objections?
It’s normally best if you get a strong idea on what rights you hold and to what degree you can set up your fight. It’s advisable to have a talk with your attorney or to use your attorney to monitor this entire process. And every attorney has their own set of ways of handling such cases so it’s better if you see all the options and handle it wisely. Such infringement can be sat and talked upon to derive a perfect understanding that benefits both or minimum your own business.
So, it’s safe to take your objection process to your attorney and let the professionals handle it, seriously speaking objections is an attorney thing, so let professionals handle it. So, to sum it up, your trademark is yours, it’s not enough if you apply for it and get it. You should constantly fight for what you yours. If you stop, you may get forgotten. Tell me now, do you want to be a forgotten brand.