Trademarks: Why monitoring your trademark is just as important as registering it

The world of intellectual property rights can sometimes be difficult to get to grips with, given its intangible nature and combination of different types of rights. However, such rights can often be crucial to your business and in some cases, can be your most valuable business assets. 

One such area of importance is the registration and monitoring of your trademarks.

The image of your business and the products and services you sell to your customers is everything. The success of your brand is not only linked to profits, but also how you deal with intangible assets, such as trademarks. Indeed, trademarks are key to securing your brand and reputation and differentiate your goods and services from those of your competitors.

At Gerrish Legal, our market research has indicated that whilst many companies focus on intellectual property in relation to their products, many neglect to consider protecting their own name, logos and brand image. In this article, we look at why this is important, and what you can do to ensure your business’ name - and its future - is protected.

What is a trademark?

A trademark is a sign that is capable of distinguishing the goods or services of one undertaking from those of other undertakings and that, according to the definition given by Article 4 of the European Union Trade Mark Regulation (EU) 2017/1001, (the EUTMR), can be:

‘represented on the Register of European Union trade marks, in a manner which enables competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor’. 

Therefore, a trademark refers to a brand, business name or logo, that is inherently distinctive and relates to the business in question, and in some cases, should be registered on a trademark register. Trademarks should not be mistaken with company names and domain names. These names all have different purposes; trademarks are registered to identify products and services offered by a company whilst the company name identifies the legal entity that operates a business and the domain name identifies an internet address.

Why should you register your trademark? 

Regardless of where your company is based, it is important to register your trademark with a national, or international intellectual property office (IPO), as failure to do so could mean that third-party individuals and businesses could use your trademark (brand names, images or logos) for their own purposes.

Some jurisdictions such as England & Wales and the United States have common law trade mark rights, which means that your trademark could be protected against third-party use even if it has not been officially registered (but only under certain circumstances and usually involving a lengthy process of proving that the trademark belongs to you and that it is pivotal to your business in a specified territory).

However, certain countries such as France and Germany do not afford the same protection to unregistered trademarks and as such, it is always best to ensure that your rights are protected through registration. Having registered trademarks can also add to the valuation of your business, in the form of intangible assets and goodwill. 

Trademarks can be registered at different intellectual property offices, either nationally or internationally. Examples include: the UKIPO for the United Kingdom, the INPI (Institut national de la propriété industrielle) for France, the EUIPO for a trademark that is protected throughout the European Union, and the WIPO for worldwide protection. Trademarks are also protected in different classes so that the mark is only protected in relation to a certain type of goods or services - such as food or software or medical services. Furthermore, trademarks are protected on a “first come, first served” basis.

If you need assistance with the registration of your trademark, don’t hesitate to check out our affiliate partnership here!

As such, in the EU, you do not need to be using your trademark at the time of application. In the US, your trade mark can nonetheless be registered on an “intent to use” basis and many businesses send such applications during their formation stage. Sending an application to register as soon as possible will also give you priority protection should a similar mark be sent for registration during the opposition period of your mark. 

Once you have registered your trademark, why should you monitor it?

A trademark is the signature of the company attached to its products or services, and as such you will want to protect this signature and ensure that third parties are not using it in a way that could cause confusion to your consumers and clients.

Monitoring your trademark can help you to address and eradicate use of your trademark by other businesses or competitors as an identification sign for products and services that are not yours - and possibly are of a lesser quality. 

Such use could indeed be detrimental for the reputation of your company and could result in economic losses.

Monitoring trademarks is also a way of preventing a third party from benefiting from the fame and goodwill of your trademark to identify and commercialise their own products.  To this end, not only do you have the task of monitoring unauthorised use of your trademark in the day-to-day business world, which can be difficult to do, you also have the obligation to ensure that a similar or infringing mark is not registered at the same IPO under the same classes that you have filed your trademark.

As mentioned above, trademark protection is granted on a “first come, first served” basis, and therefore, even before your trademark has been registered, you will be given priority during the application period if an infringing mark is filed after your application. Whilst you will have grounds to oppose the filing of a similar or same mark, you will still have to monitor any such subsequent applications in order to exercise your right to formally oppose a registration. 

Similarly, monitoring is also required after registration. Usually, when a company or individual is filing a trademark, their legal representatives will carry a trademark clearance search in order to see whether a similar or same mark is already registered at the relevant IPO(s) and whether these could pose a threat to the proposed registration. Any red flag findings at this early stage would mean that the registration is amended in order to avoid any conflicts.

However, as a business with a registered trademark, you cannot rely on the fact that all third parties will go through this procedure to ensure that their pre-registration mark does not infringe on your registered mark. Likewise, you cannot rely on the relevant IPO to flag any such infringements to you.

The onus is on you as the owner of the registered trademark to ensure that you monitor the use and infringements of your trademark. When a trademark is monitored regularly, the owner of the mark gives itself the opportunity to identify and act against an infringement of the trademark.

When monitoring a trademark, consideration should be given to whether the third party mark is truly similar. For this, the European Court of Justice (ECJ) in Sabel BV v Puma AG stated that parties should consider the visual, phonetic, and conceptual similarities between your trademark and the third party trademark, as well as the overall impact and impression of both marks and a comparison of the distinctive and dominant elements of both marks. 

Furthermore, in subsequent decisions such as Specsavers v Asda, Case C-252/12, the ECJ added that colour can form a part of this assessment if the original mark was filed in colour or stated that colour formed a distinctive part of the mark. Additionally, attention must be paid to whether the owner of the infringing trademark’s goods or services are similar to the goods and services you are providing, as described in Article 8(1)(b) of the EUTMR or Section 5(2) of the Trade Marks Act 1994 in the United Kingdom. 

How to monitor your trademark?

Most IPOs have databases which show the trademarks that are registered with them (the trademark register). For example, the French authority in charge of intellectual property, the INPI, has a database that allows you to run a search for French, EU and international trademarks and also provides a monitoring service for a fee. However, such reports do not give guidance on the legal aspects of any infringements.

Similarly, the UK’s Gov.uk page provides a database of trademarks that you can use to monitor applications and registrations of infringing marks, as well as a free tracking service. Additionally, the EUIPO has a database called TM View which can be used to search for all trademarks registered around the world, and also to search for trademarks through uploading an image.

However, these processes can be quite time-consuming and tedious, and do not account for uses of your trademark outside of these registers, for example on app stores and retail sites such as eBay and Amazon. 

Conclusion

Ongoing monitoring of your trademarks is just as important as the initial registration - both looking at the registers of IPOs in the territories where you use your trademark, but also looking at actual use in the market. This can be a difficult task, however, when completed successfully, will protect some of your most valuable assets, regardless of the size of your company and the capital that is available to you. 

If you have any queries over your trademarks, whether registered or unregistered, or queries about monitoring your trademark portfolio, please do not hesitate to contact us!

Article by Komal Shemar @ Gerrish Legal, August 2020