Thanks to your trademark registration, you have as a trademark owner a monopoly on the use of your trademark. You can use this right to take action against infringements of your trademark. But how do you become aware of these infringements? One way to do this is through trademark monitoring. Through the trademark monitoring system, you will be informed of all new trademark applications that are very similar to your trademark, enabling you to file an opposition in time. What are the other advantages of trademark monitoring and how do you implement trademark monitoring?
What, trademark monitoring?
Trademark monitoring protects an existing trademarkby comparing them in the registers with new trademark applications. These applications are selected in accordance with the countries in which you, as a trademark owner, have protection. Your trademark is thereby not only compared to applications for identical trademarks, but also to similar trademark applications. It is therefore not required that the new trademark is 100% identical to yours.
As soon as a new trademark comes close to yours, you will receive a trademark monitoring report. This way you are informed at an early stage of possible future infringements or misuse of your trademark.
Can you monitor your trademark yourself?
The trademark offices will not refuse a new trademark application if it is similar to your earlier trademark. In fact, the trademark offices do not warn trademark owners when someone files a similar or even identical trademark application. It is up to the trademark owner to be alert.
But new trademarks are filed every day, up to 200,000 annually in Europe and the Benelux. Monitoring your trademark is therefore not a one-time action. It requires continuous monitoring of all these new applications. Moreover, very often trademarks are first registered, only to be used by the trademark owner later on.
In other words, the enormous number of trademark applications and the fact that new trademarks are not always used immediately, make it not achievable for entrepreneurs to scan the internet themselves.
The advantages of trademark monitoring
Discover trademark infringements on time
Detecting in time that someone is infringing your trademark is essential. Only then will you be able to file an objection against the registration of the new trademark on time. An objection is called an opposition in trademark law. The opposition period starts from the publication of the trademark application. The opposition period varies between 2 to 3 months.
The trademark monitoring system keeps an eye on these periods. Therefore, you can be sure that you are on time to file an opposition against the trademark registration. If your opposition is then accepted, the registration of the other trademark will not proceed. In a manner of speaking, you are preventing infringements of your trademark even before they can take place.
Prevent dilution of your trademark
We speak of brand dilution when your brand name becomes so well known, that people start using your trademark for similar products of another brands. An example is Aspirin, which many people use as a synonym for painkillers.
If you do not take action against this use,you may lose your trademark right due to dilution. As a result, anyone can use your trademark. If you, as a trademark owner, can prove that you take action against trademark infringements, you will avoid this dilution.
Trademark monitoring will report these infringements to you. This way you can point out infringements to others and you will preserve the strength of your trademark.
Prevent confusion and damage to your reputation
When the similarity between both trademarks is very high, there is a chance that your customers are confused about which trademark belongs to whom. In addition, your brand may enjoy some popularity. It is then tempting for new brands to take advantage of this and ‘surf along’ to your fame. Both practices are very detrimental to your own trademark. Therefore, do not allow similar trademarks to be registered.
Don’t be confronted with surprises
If you do not monitor your trademark, it may happen that you have not noticed similar trademark applications. Suppose in the meantime the opposition period has ended and the trademark has been registered. At that moment, a procedure to oppose the new trademark becomes much more expensive and complicated.
More cost-efficient solutions
On the basis of the trademark notifications, as a trademark owner you can opt to first write to the other party. This allows you to negotiate directly with the applicant of the new trademark. These negotiations about the trademark can ensure that an infringement of your trademark right is amicably prevented. This way, you avoid unnecessary costs and ensure that your own damage due to the use of the other trademark does not become extensive. You will also have a stronger negotiating position since you are the one with an already registered trademark.
Trademark monitoring is also cost-effective if you do not want to negotiate. The trademark monitoring notifications give you the opportunity to file an opposition in time. Filing an objection after the opposition period is only possible in court. As a result, you have to take judicial costs into account, which are considerably higher than those of an opposition procedure or direct negotiations.
In other words, a trademark registration is not sufficient to protect your trademark permanently. Through trademark monitoring, infringing trademark applications are efficiently traced so that you can take action in time. This way, you prevent confusion and reputational damage to your own brand.
By having theJurists perform your trademark monitoring, you do not need to waste valuable time yourself by constantly keeping an eye on the trademark registers and new players on the internet. If we notice that there are applications for signs that are similar to your trademark, we will draw up a trademark monitoring report and suggest possible next steps. Prevention is better than cure, also in trademark law!
If you have any questions about this, you can always contact us at firstname.lastname@example.org.
Written by Pauline Vertongen, Trainee theJurists, and Kris Seyen, Partner theJurists