The importance of Trademark Watching
The protection of a trademark portfolio should be as comprehensive as possible to avoid any type of infringement of the owner´s rights. When deciding the best way to shield assets it is central to draft a registration program that will provide sufficient guidelines to achieve full protection.
The International Trademark Association (INTA) identified that the main purposes of a company’s registration program are:
“(1) to obtain maximum control over the use of its marks; (2) to provide a company with the strongest possible basis to challenge infringers of the company’s marks or others who are using the company’s marks without authorization; (3) to prevent third parties from registering the company’s marks; and (4) to minimize the financial risks associated with the use of the company’s marks.”
After having identified the above objectives, the next step would be to adopt the appropriate tool to search and monitor unauthorized trademark-related events that could deteriorate and undermine the trademark owner´s rights.
A watching system consists of a mechanism by which a trademark owner monitors trademark activities in order to prevent infringement of his/her rights; likewise, it allows the trademark owner to counter-attack swiftly when the unauthorized trademark use occurs. A watching system can involve off-line and online monitoring with the objective to identify infringers, detect conflicting trademark applications locally and/or worldwide in order to file infringement judicial actions or oppositions.
Personalizing watching services to each trademark owner´s interest may imply including examination of all sorts of publications such as business directories, journals, newspapers, company name registries, domain name registries, etc., to expose any third parties’ attempt of trademark misappropriation.
Additionally, since online business is predominantly taking over the Internet, the watching system should also include country-specific or worldwide abusive and unauthorized use of trademarks on the Internet conducting periodic searches on search engines, competitors’ sites, social media, and other websites to identify potentially harmful uses of registered signs. In this sense, technology advances allow trademark owners to implement the use of tools that notify the TM owner or their legal representative of any type of trademark use within the content of the site or in the meta tags or title tags.
The main goal in designing a wide-ranging and effective watching system is to avoid incurring in the very high costs of litigation against infringers by planning preventing strategies within a modern trademark monitoring structure.
INTA. Trademark Basics: INTA Global Protection Enforcement Presentation. Available at http://www.inta.org/TrademarkBasics/
Consulted on December 12, 2016.