Trademark is an asset to a business so we need to ensure effective use and the safety of the asset. Merely registering for a Trademark is not enough. It is important to know that the non-usage of the mark leads to Trademark dilution and in certain cases abandonment of the mark. Trademark dilution refers to the phenomenon wherein the rights in the mark is diluted because there are numerous marks in the Register which are similar. The rights accrued in the mark by way of this registration is valid only when there is enforcement of the same. As a rule, use of a mark triumphs the registration of the same. Therefore, it is pertinent to prevent any third parties from using/registering an identical or similar mark as that of yours. It is also equally important to continuously use the mark.
For instance, some ways of diluting the marks are:
- Extensively using phonetically or visually similar mark to that of yours, which may not be in your knowledge by a third party-. By doing this, a prospective infringer creates a parallel goodwill to that of yours, which makes it very difficult later on to obtain an injunction against a prospective infringer for the use of such marks.
- Filing for Registration of phonetically or visually similar mark to that of yours, and getting that registration without an opposition from your side by a third party-. Again the process of removal of the mark from the Trademark Register shall be difficult, Obtaining an injunction, in such a case against a potential infringer may also be difficult and even getting the injunction against the alleged infringer shall be difficult.
This may be prevented by actively enforcing the rights in your marks. One of the ways in which this may be achieved is by keeping a Trademark watch on the relevant marks.
In Trademark watching we examine all relevant trademark registers to identify the trademarks which are identical or similar to others trademarks. Trademark watch ensures that our mark is protected from an infringer or an unauthorized user.
The watch is also a proactive measure to help the trademark owner to enforce his mark by acting against any infringement and misuse of his mark in a timely basis. During trademark watch we generally look into relevant trademark register and compare the mark to check any unauthorized use of our trademark.
The watch can be tailored to meet your specific business needs but, in general is done to identify the following:
Identical Trademark Watch:
In this type of watch we identify the marks or devices which includes logos or labels that are visually or phonetically identical.
Similar Trademark Watch:
In Similar Trademark watch, we generally identify identical and confusingly similar marks. When one is looking for similar marks, it is not restricted to visual similarity, it extends to phonetic similarity as well.
Trademark Watch with Opinion:
During such watch the attorney provides with an opinion based on the results of the identical or similar trademark watch report depending on client’s consideration of prior rights and the likely impact on clients business and market share.
Trademark watch prevents trademark dilution, whereas trademark dilution is blurring or fading of the famous trademark. Through dilution, a trademark starts getting weak and slowly due to improper enforcement starts to loose distinctiveness and loses its ability to distinguish the owner’s product with that of competitor’s.
The trademark dilution applies to well known or famous marks so when your mark is known in the market and your business is growing, a third party would generally tend to take advantage by unauthorized use so there comes the need to be extra diligent. So it is always advisable to proactively conduct a watch which would prevent such dilution.
For examples of marks which are “famous” like: XEROX, COCA-COLA, KODAK and REEBOK. It would be much difficult to protect a mark like APPLE (computers) from getting diluted, since the trademark APPLE has been used with respect to other well-known products, such as the Beatles records, and has been used by many other businesses.
Trademark watch is also done by looking into trademark registers and searching for application for trademark filing and see whether any mark has been applied which same or similar in visuals, phonetics, in writing or pronunciation, and is applied for same or similar goods/services. If such a case occurs the remedy is filing opposition against the trademark application pending and opposes the mark to be granted.
Trademark watch service really safeguards your asset from being exploited by bringing the attention to the presence of marks that are identical or similar to that of your mark. This allows the Trademark owner to take an informed decision and options to pursue in order to enforce their rights.
The options that are available are as follows:-
Trademark Opposition: Filing a Trademark Opposition against all the deceptively similar Trademarks published, so that we can avoid getting these marks registered. The advantage of a Trademark opposition is that, this option is available in front of the Trademark office itself and the mark is yet to be registered. This is a time bound process as against a court proceedings and is also cost effective.
Legal Notices: Additionally, sending a Legal Notice to the person/s who have been using marks deceptively similar to that of yours identified through the Trademark Watch Service.
Court Proceedings: Preparing and supporting you to take legal recourse, if the matters remain unresolved by filing Trademark Oppositions, and through Legal Notices, or other out of court procedures.
For a Trademark owner to pursue any of these options, it is a prerequisite that one has to be aware of the infringement/dilution that is occurring. This is made known to the business owner via the Trademark watch services.
We at Singhwal, have the experience in handling the Trademark watch services across various jurisdictions, to provide our clients the best services across various jurisdictions along with our opinions and reports keeping watch on the mark.