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Trade Marks
Do you need to monitor your trade marks? Trade mark watching and other watching services you might consider
Chris Baxter
Chris Baxter

What is trade mark watching?

Trade mark watching is a regular search of applications for registration of identical and similar trade marks. It helps trade mark owners to identify infringing trade mark applications so that they can take timely actions to stop them. Usually, trade mark watching is carried out in the jurisdictions where trade marks of a business are registered and/or used. For strategic purposes, a watch on competitors’ trade marks is commonly employed as well.

Depending on business needs, trade mark watching can be extended to monitoring business name registrations, domain name registrations, and misuse of trade marks on the Internet.

Why trade mark watching is needed?

There are various reasons for trade mark owners to continuously monitor and watch their trade marks. They can be broadly summarised as follows.

Reason 1: Not missing an opportunity to oppose conflicting applications

Watching trade mark publications in a jurisdiction alerts trade mark owners to the publication of applications for identical or similar trade marks and allows the owners to oppose the applications if they believe the applications will conflict with their trade marks.

In most countries, the trade mark system is designed to filter out later filed conflicting applications during examination. However, in some circumstances, conflicting marks can still proceed to publication. These include:

a. A later-filed trade mark has overcome citations during the examination.

In Australia, for example, Section 44 of the Trade Marks Act 1995 is a ground of objection to trade mark applications which are identical or deceptively similar to prior registrations or applications. Nevertheless, Section 44 accepts that prior use of the trade mark can overcome this objection. In other words, if the applicant provides evidence of use of the trade mark which demonstrates the trade mark of the application has been used for a period of time before the earliest priority date of the cited marks, the application can proceed to acceptance.

b. The test of similarities between trade marks is subjective.

The test of similarities of trade marks takes into consideration a number of factors, including the appearance and aural effects of the trade marks, the significance they deliver, the similarities of goods and services, etc. It is a subjective assessment rather than a black-and-white answer. It is not uncommon that different examiners, or different trade mark professionals, hold different opinions on the same matter. As such, trade mark owners may find a conflicting application being accepted for registration by an examiner, which requires owners of prior trade marks to oppose the application in order to avoid a dilution of the exclusivity of their trade marks on the register.

c. Similar trade marks not being a ground of objection in some jurisdictions.

The trade mark application process in the United Kingdom and the European Union does not raise objections to applications that conflict with prior registrations or applications. Instead, the onus is on the owners of the prior trade marks to oppose the later-filed applications if they believe the applications conflict with their registrations or applications. If no opposition is raised within the prescribed timeframe, the system allows the co-existence of similar trade marks.

Reason 2: Identifying infringers in the market

The second main reason of trade mark watching being important is that it can effectively identify infringements in the market and allows trade mark owners to take action early and avoid associated loss.

Copycats, counterfeits, and unauthorised use of trade marks in the market are unable to be automatically detected or prevented by trade mark registrations. It requires trade mark owners to proactively monitor misuse of trade marks by other parties and take legal actions to stop them.

Due to geographical limitations, detecting infringements in physical markets is a labour-intensive task and is time-consuming. Nevertheless, with the trend of business activities switching from physical to digital, trade mark infringements occurring in the online environment is much easier to be detected than those occurring in the physical environment. Common law watch, Internet watch, domain name watch, social media account name watch, etc. are useful tools for trade mark owners to detect infringements in the online space.

Reason 3: Knowing your competitors

Watching a competitor’s trade marks provides useful information about the competitor’s intention of entering into foreign markets. Watching a competitor’s trade mark application activities provides information on new brand names and the markets they will enter, and detect bad faith applications for trade marks which are similar to yours.

Developing a watching strategy

Trade mark watching is not simply watching all trade marks in a large portfolio as it can be costly. A watching strategy should be tailored to suit business needs and resources. Generally, the following elements should be taken into consideration:

  • What to watch – the signs, classes of goods and services, names, domain names, a competitor, etc.
  • Jurisdictions – domestic, regional, or International.
  • Types of watch – trade mark publication watch, common law watch, Internet watch, domain name watch, social media account name watch, etc.

Closing comments

If you are interested in trade mark watching, speak to our trade mark attorneys today. Our attorneys will be delighted to review your trade mark portfolio, develop a watching strategy for your portfolio, and guide you through actions against trade mark infringement.

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About the author
Chris Baxter
Managing Director, Patent & Trade Mark Attorney
Chris Baxter is a Sydney patent and trade mark attorney specialising in software patents, computer patents, medical device patents and engineering patents.

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