Trade Mark Watching – Don’t Let Your Competitors Get Away With It!

For any brand owner that has invested time, money and energy in securing registered protection for its trade marks, there can be no worse sight than seeing a competitor trying to register for itself a similar brand name or logo (or even worse – the same brand name or logo) in the same line of business.

This can be a difficult enough problem in the UK, but where companies or individuals have businesses interests in more than one country or region and have registered trade marks to protect those interests it can be extremely challenging to monitor trade mark registers outside the UK in order to make sure competitors are not trying register the brand owner’s marks elsewhere.

I don’t need to monitor my UK trade mark, do I?

It is a common misconception that just because you have a trade mark registered in the UK that will stop someone else from trying to register the identical or very similar mark for themselves covering products or services in your commercial field.

Why is that?

Well, when a trade mark application is filed in the UK, the UK IPO will conduct a search of the register for earlier conflicting rights.

So far so good, but there are problems with this:

So let’s say – for example – you have a UK trade mark registration for the mark ATTLANTUS for fire extinguishers and a competitor is trying to register a very similar mark ATLANTIS for the same product.

The chances are (because the examiner is searching the explicit term “-atlantis-“) your earlier registration for ATTLANTUS may not be revealed by the search.

These searches are not sophisticated and the UK IPO does not use any dedicated search algorithms.

In this scenario, your competitor may think they are in the clear and you will have no way of knowing they are trying to register a similar mark.

Let’s now say that the examiner did locate your earlier trade mark right ATTLANTUS.

It is highlighted in the examination report which is then sent to your competitor, but under the Rules the examiner cannot decide to block the competitor’s later ATLANTIS application from registering as a consequence of your earlier trade mark right.

At best, you will receive a notification from the UK IPO to state they have examined an application to register ATLANTIS and an examiner has highlighted it to be a potential conflict against your earlier ATTLANTUS registration.

BUT – if the UK IPO do not have your up to date contact details, or your have an address for service where the notification may get missed or forgotten about, or you live outside the UK and are paying to have “ghost” address for service (a rented room at a “shell” UK address, where there is never a physical presence and the notification is likely to be unseen) then you will have no idea that an application has been filed which needs your attention.

In this scenario, you have no chance for taking any action because you simply won’t know your competitor is trying to copy and register your brand name.

You may only realise this further down the line when the copycat mark has registered. There are means to try and deal with that registration, but it could be more aggravating and costly.

What if you have registrations for ATTLANTUS covering the EU and other territories globally? How can you stop a competitor from registering your mark in those territories?

Certain national offices in territories may cite your earlier right and block the copycat applications automatically, but others may not.

In fact, very few territories use the same notification system as the UK, so you cannot even rely on that (although for the reasons above, you should not rely on that anyway).

So the questions are:

• How do you keep an eye on all your competitors and their attempts to register copycat trade marks, in all the regions and countries of importance to you?

• Do you even know the identity of all your competitors?

• How can you be alerted to problematic trade mark applications and then still have enough time to review and deal with them?

The answer is through a  Trade Mark Watch Service .

So what is this and how does the service work?

The purpose of a trade mark watch is to monitor the trade mark registers (usually worldwide) so that whenever any potentially conflicting trade mark applications are filed by other parties and then later published, a brand owner is alerted and can then take the appropriate action to stop them registering, if considered necessary.

In many territories, earlier rights are not readily cited by national offices and will not therefore automatically block the registration of later-filed applications for conflicting marks.

In other territories, national offices often conduct very low-level searches and fail to locate (and cite) earlier rights against conflicting marks filed under later applications.

Therefore,  the onus rests heavily on brand owners to police the trade mark registers at all times .

With SH&P, your trade mark watching is in very good hands.

We continuously review reported watch notices (detailing published applications aligning to the watched mark, the relevant classes and the territory (or territories) of interest) and would report to you on an “ad hoc” basis anything that we considered to be worthy of your attention.

For some brands we do not report a single case in a year, but for other brands we may report more frequently, depending on the nature of the marks being watched.

Regardless, the comfort for an SH&P client is that an ever-watchful eye is maintained behind the scenes and that proactive measures are in place to control and prevent competitors from unfairly obtaining registrations for identical and very similar marks in any overseas territories.

Left unchecked, these later registrations could dilute the strength of a business’s brand in the concerned jurisdictions, possibly leading to a commercial impact.

This is a low cost service and vital to businesses with brands to protect.

If you are interested to know more and how we can keep a watch on your trade mark rights (giving you peace of mind and freeing you up for other things) then please get in touch us with us today – using the form below.