“He who excels at resolving difficulties does so before they arise”, said Sun Tzu in the Art of War.
Protecting your mark by filing it is a necessary condition for peacefully enjoying it, but it is far from being sufficient.
Infringement and other abusive uses of distinctive signs are a growing threat to owners of exclusive rights. The danger is real for investments, competitive advantages, credibility and renown of businesses facing infringement and dilution of their marks.
Unmonitored, unknown and thus uncontrolled, those attacks may also considerably decrease the market value of trademarks. As a consequence, the registration of the latter may also lose relevance against registration and use of competing marks, the coexistence of which might become unchallengeable.
Do not wait for your supplier or distributor to tell you they are confused, for consumers to turn to the mark your competitor has misappropriated, or for you to realize that your mark has been stolen or that the corresponding domain name has already been reserved to act!
1/ Watching applied-for marks
Act as soon as possible and be proactive so as to prevent the registration and use of infringing trademarks before difficulties arise.
Most countries have implemented in their national law an opposition procedure which enables trademark owners to bar the registration of infringing marks.
In general, the opposition deadline is quite short: two months before the French Trademark Office (INPI) regarding French trademarks and three months before European Office as concerns European Trademarks. Once that deadline has lapsed, it is necessary to start more costly judicial or administrative procedures (the cancellation action fee before OHIM is 800 Euros, whereas the opposition fee is 300 Euros; the average cost of a judicial cancellation procedure in France is 8000 Euros, whereas an administrative opposition procedure costs 1500 Euros), not to mention the inherent risks of such actions: the adverse mark is already well set on the market, its owner will fervently defend it by relying on reprisals or counterattack (revocation action, cancellation action as a counterclaim) which may jeopardize the earlier rights.
Besides, regulations in most countries and in particular in France and in the EU set a five-year period to take a legal action against the use of a registered mark, so that it may be extremely difficult to prevent a mark to continue to be used if such use has been tolerated for five years.
As a consequence, it is strongly recommended to monitor the trademark applications filed by third parties in order to be informed about infringements and to have the opportunity to send cease-and-desist letters to applicants, requesting them to withdraw their applications before any use starts or demanding that they limit their applications to their strict activity, together with an undertaking not to use the trademark in the same field as yours. In case the negotiations fail, it will be necessary to file in due course an opposition procedure, without having to go to court.
The monitoring databases are worldwide and the watching scope is up to you to choose:
a) large or limited to one or several territories, to one or several marks
b) for one or several products or services, knowing that identical marks in unmonitored classes are displayed by watching in a single class
c) limited to identical or similar trademark applications
d) limited to trademarks or extended to company names and /or domain names of the Internet network, in France and/or in foreign territories
2/ Watching by applicant name
Another strategic watch service consists in setting a watch over all trademarks or other signs filed in the name of a same company, which enables you to be aware of your main competitors’ projects. This type of monitoring is particularly useful as concerns registered designs as competitors’ new products are thus identified before their launch.
3/ Watching abusive uses
Nowadays, the development of Internet uses and of the communication tools allowing access to the network increase, for companies, the risks of abusive or illegal uses of their names or trademarks: sales of counterfeits, customer hijacking through the use of adwords, identity theft on social networks, dilution of trademarks through improper uses, etc.
In order to prevent such infringements and adverse effects and to ensure the continued existence of your company and its trademarks, it is highly recommended to set a Press & Web watch. By identifying the wrong uses of your trademarks or other distinctive signs, you can:
- Fight the spread of counterfeits,
- Spot bashing, denigration and renown misappropriation acts,
- Control parodies and pastiches,
- Prevent dilution or trivialization of a notorious trademark used in a generic manner in common language.
Such watch may cover:
- Discussion forums, blogs, sites and domain names…,
- Social networks (Facebook, Twitter, etc.),
- News websites, ads websites,
- Meta-tags of webpages, adwords, etc.,
- Online sales platforms (eBay, Priceminister, etc.),
- Database of French and international press (more than 10 000 titles).
The search strategy must be defined beforehand with you in order to select the key-words, the variations of the watched trademark, the usual competitors, the main websites to monitor, the identification of the customer/licensees network, etc.
4/ Watching domain names
A watch service may also be set on your domain names so as to be able to take, as soon as possible, the appropriate amicable measures or start arbitration procedures.
That watch provides an access to the main information about identical or similar spotted domain names and comprises a screen copy of the corresponding website.
A specific watch over a particular domain name via a Registrar such as ORDIPAT is sometimes necessary for retrieving a stolen domain name in the case it was not renewed or for negotiating its purchase in possible auction sales.
Anticipation is the key… your distinctive signs should be closely monitored!
Contact: Catherine LEVALET
Publication date: May 2016