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This article has been written by Ajay Bribal, pursuing a Certificate Course in Trademark Licensing, Prosecution and Litigation from LawSikho.

Introduction

Registering the trademark is the first step in the legal protection of brands. To protect the value and worth of the trademark, it is necessary to protect your trademark and enforce it regularly. To thwart the trademark dilution, the proprietor needs to keep watch on all the possible attempts by businesses or third parties from registering a similar or identical trademark. The supervision also extends to domain-squatting i.e., domain registration which the third party may use to pass-off their goods as belonging to others. 

This enforcement of trademarks involves filing an opposition notice before the registrar, filing infringement or passing-off suits in the courts, filing rectification or cancellation proceedings etc. The greatest risk to trademark dilution is third party usage without any authorisation. It reduces the distinctiveness and uniqueness of the trademark.

Benefits of trademark watch

  • By using the trademark watch services, you are kept up to date with the status of your trademark and the competitor’s trademark.
  • If the objection or opposition is raised, it is pertinent to prepare the reply and may also be required to give the supporting case laws.
  • Gives the attorney the chance to oppose the registration application within the set time framework and enforce the rights of the already registered trademark proprietor.
  • Helps you assert your trademark rights.
  • In case the opposition is filed by the other parties, you will be notified.
  • Keeps you informed with the latest status of your trademark.
  • Ensures your brand remains untarnished and protected.
  • Keeps the track of all pertinent trademark registers to identify applications for identical and similar trademarks would be kept.
  • Looks out for all the identical or similar marks that are registered.
  • Keeps the track of possible passing-off violations being done online or offline.
  • Trademark violation may also be in the form of domain names or online advertisements. The dashboard keeps track of all of them also and notifies whenever a violation is made.

Importance of earlier detection

The earlier the Trademarks violations are identified, the easier it is for the companies to enforce their Intellectual Property Rights. It is necessary that the trademark owners need to adhere to strict guidelines mentioned in the law to protect their brand. Later, conflicting marks may be allowed registration on account of honest concurrent use which may further dilute the value of the trademark. For example, the opposition to the trademark published in an advertisement journal may be allowed to be filed within 30 days only following which trademark is granted registration. 

Earlier detection of trademark infringement also protects from the implied acquiescence given in the Trademarks Act under Section 33. If the proprietor of the trademark does not watch the marketplace for possible violations and enforce its right granted via trademark registration, the rights of the proprietor’s registration will get smaller over time to the point where they become difficult to enforce.

Quick detection is also vital when it comes to enforcing the rights against the conflicting use and/or bad faith applications and for constructing the evidence of abuse or misuse to be used when acting against such disputes. Here, online trademark watching also plays an important role. A trademark dashboard is also useful to monitor the competitor and see what they are doing. This may help you be aware of possible future violations of your trademarks rights. Additionally, it may also give insights into the strategies of your competitors. 

It is exceedingly tough to recover from trademark dilution. Therefore, the early and continuous watch is the only thing that keeps your trademark rights safe and secure.

To know more about Trademark dashboard please visit

Occasional failures on part of an examiner

Trademarks Examiner sometimes do not catch every conflicting mark whenever a new registration comes before them. Presume you have a trademark registration in place.  Now, a company that is your competitor has applied for a new trademark registration that is identical or similar to your trademark. Maybe another company that may or may not be a competitor has applied for a new trademark that is identical or similar to your trademark, but the mark applied for is for different categories of goods or services that are in a different market.

The trademark examiner may fail to see a conflict or may have accidentally missed the conflict.  In that case, a new trademark registration may be allowed to proceed.  But if you had kept a watch on this new application, you would have been very concerned, either because the trademark is similar to yours, or the trademark and the products are similar to yours. Furthermore, the examiner is not obligated to report probable conflicts to the registered owners of other trademarks. It is the duty of the proprietor to oppose the registration when the trademark is advertised in the journal. 

Whenever you are monitoring the trademark record for potential conflicts, you could oppose applications filed by other persons.  If you are not diligent in monitoring the trademark database, a trademark examiner acting bonafidely may allow other parties to register the trademark, which may cause you real problems in future.

Even though once a trademark is registered, it can be cancelled or rectified as allowed in the trademarks act, it is tougher to do it.  The superior approach is to oppose it before it is cleared by the examiner and granted registration by the registrar, based on your common law or statutory rights as the proprietor of an already registered trademark.

Why cannot trademark examiners pick up everything and thwart it?  There are many reasons.  There are over a lot of trademarks on the Trademarks Register.  There are 45 classes of goods and services as per the nice classifications.  Moreover, a trademark can be registered in other languages also apart from Hindi or English. Trademark examiners must use their own judgment about what constitutes a conflict. They may or may not be right all the time. 

Statutorily they have the responsibility of safeguarding the existing trademark registrations and the rights of the registered proprietor, but when confronted with a well-reasoned legal reason from a potential trademark registrant, the examiner may be satisfied that the trademark should be granted registration and your rights won’t be protected. This may be done in the examination phase, when a trademark registrant may give a reply to an objection raised by an examiner. 

Type of trademark watch

  • Identical Trademark Watch
  • Similar Trademark Watch

A mark is identical to the earlier trademark if it is reproduced without making any modifications or adding new elements. As a result, when marks are viewed as a whole, they may go unnoticed by the consumer of average mind due to differences being insignificant. A mark is similar to the earlier trademark when the mark is deceptively like the earlier trademark.

During the duration of the trademark monitoring the legal consultant provides a view based on the results of the similar or identical trademark watch report. The opinion also includes the likely effect on clients business and market share due to violating trademark. This is necessary in the case of a well-known trademark. These marks are recognised by the major sections of society. If their reputation is harmed, they suffer a huge loss. For example, using a Louis Vuitton logo on a subpar quality product. First-time buyers may form an extremely bad impression of the brand and may never purchase from them again. 

Ways to do a trademark watch

  • Trademark Database search: Regular trademark database checks should be made. Trademark search databases contain all the necessary information and if we understand how to use it, doing a search can be enormously helpful. These databases come with features that help make trademark search easier.
  • Monitoring Trademark with Search Engine: Sometimes, entities may not register a trademark. In such cases, a regular search engine-based trademark watch should be conducted to identify the potential cases of trademark passing-off cases. Google, Yahoo, Bing, and Duck Duck Go can be used to conduct the search for such cases. We can create a list of keywords that are associated with the trademarks, type it on search engine websites and thereafter, manually check whether someone is abusing our registered trademark. This method can also throw up the PPV or PPC ads used by the parties.
  • Excel-Sheet Record: Excel sheet can be created to keep a record of the potential trademark violations. A proprietor or an attorney can prepare a list of trademark violations, how and where they are found and what possible actions can be taken against those violations. 
  • Offline Search: This may involve constantly looking at industry journals and periodicals, yellow pages search, visit to industry shows etc. Results from these watches are compiled to an excel sheet.

Conclusion

As observed above, trademark watching or monitoring is a thorough, endless and constant process that every trademark proprietor should undertake to prevent their trademarks from being diluted or being used illegally. Even though this process is a tiresome, monotonous and time-consuming procedure it, however, pays off in the long run when it comes to safeguarding your brand reputation, goodwill and value.


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