Trademark Watching Flashcards
Why is TM watching important?
Once you have a registered Trademark it is important to stop other people from registering similar or identical marks.
Around the world TM applications are advertised for opposition purposes and these publications are in the public domain. However, to review every jurisdiction/country of interest would be time-consuming so firms often entrust trademark watching firms.
What is the purpose of Trade Mark watches?
Protect marks from third parties filing identical or confusingly similar marks
Identify potential counterfeiters and infringers
Ensure brand is not lost due to common use (brand dilution)
Can provide early identification of a potential problem
Not all trademark offices examine applications on basis of prior rights or provide notifications - therefore important to take active role
What are the key considerations when setting up a trademark watch?
- What does the brand owner want to look out for and protect?
- What kind of mark is it? (Device, logo, word, non traditional)
- What classes do they want to protect/watch for? (Core classes, related classes, unrelated classes)
- In what territories does the brand owner want to watch? (Worldwide or restricted to the territories where there are rights)
- What is the scope of the watch? I.e degree of similarity (identical, nearly identical, similar, prefix, suffix)
What is/how does a normal trademark watch work?
A normal trademark watch utilizes national and regional TM Journals/Gazettes when applications are published for opposition purposes
they will monitor for potentially conflicting applications and will typically take one of two forms
1. Identical TM watch - identifies marks or devices that are visually or phonetically identical
2. Similar TM watch - identifies identical and confusingly similar marks
Can be provided with or without opinion
Examples of other TM watching services
- Design Watch (identifies confusingly similar or identical industrial designs)
- Company Name Watch (reports newly registered identical company names)
- International Business Name Watch
- Non Latin Character Watch (e.g for Chinese version of mark)
- Applicant/Owner Watch (for watching competitors activity)
- Web watch (monitor web pages for brand misuse and unlicensed use)
- Domain names Watch (monitors newly registered domain names which incorporate brand or trademark name)
- Domain typosquatting watch (detects domain names with intentional typos)
- Social media/username Watch
- Mobile app watch
Paralegals role in TM Watches
When reviewing a watch, what should you check for/do?
- The details of the potentially similar/identical mark, who is the proprietor? (Is it the client? a competitor? A licensee?)
- Is a translation of the goods/services required?
- Put in format that makes it easy for TM attorney to review
- Ensure any deadlines for opposition are entered into a diary so dates aren’t missed
What must a notification contain?
- Details of the mark(s) identified in the trademark watching service (filing number, filing date etc)
- Details of the clients mark for reference
- Deadline to oppose the mark(s) identified
- If opposition deadline can be extended
Also possibly - - Opinion on the likelihood of confusion between marks
- Recommended action to take such as request voluntary withdrawal or a restriction of goods and services, issue cease and desist letter, file an opposition, observation or cancellation
- Estimated costs
N.B if it is an overseas application may need to get information / advice from local agent
What is the opposition period for Australia?
2 months
What is the opposition period for China?
3 months
What is the opposition period for France?
2 months
What is the opposition period for UK?
2 months (extendable by 1 month)
What is the opposition period for EUTMs?
3 months
What is the opposition period for Germany?
3 months (after publication of grant of registration)
What is the opposition period for India?
4 months
What is the opposition period for Japan?
2 months
