firm news

Chloe Fernandez
Chloe Fernandez,
Why a trade mark watch is a valuable tool in safeguarding your rights
22 July 2019

A trade mark watch is crucial in the protection of your brand and provides a cost-effective way to prevent the dilution and loss of trade mark rights. A watch ensures the early detection of identical and similar marks recently filed in the classes and countries of interest to you and affords the opportunity to oppose third party applications that may otherwise go unnoticed, thereby undermining your registered rights. 

A watch’s coverage can be as wide or as specific as required, with some businesses choosing to watch only one or two countries and others watching global regions. One example of a jurisdiction in which we have seen an increase in watch requests is China, as more and more UK businesses identify it as a priority market. Whilst IP issues occur everywhere, China has been highlighted as having particularly high exposure to bad faith trade mark applications and trade mark squatting has been seen as a profitable and low-risk activity for a number of years. A watch provides the ability to issue a cease and desist letter or lodge an opposition through the Chinese IP Office before the trade mark is granted and consequently places the existing rights holder in a stronger position than being held to ransom after a registration has been granted.

Moving closer to home, a UK watch has been key for over a decade, since the UK IPO abolished ‘relative grounds’ examinations (which prevented the registration of conflicting trade marks). The importance of watching the UK Register will increase after Brexit because when the UK leaves the EU (whether via deal or no deal), holders of EU Trade Mark Registrations and International Registrations designating the EU will be granted a comparable right in the UK. This will create over one million comparable UK trade mark rights on exit and the number of potentially conflicting trade marks on the UK Trade Mark Register will grow considerably. It is therefore vital that suitable monitoring is in place, although bear in mind that the UK IPO will notify owners of earlier UK trade marks (whether registered or applied for) of any same or similar cloned marks.

To summarise, timely detection of conflicting trade marks greatly increases your chances of resolving a dispute at an early stage and in many cases, avoids the expense of costly legal proceedings.

If you would like to discuss watching services, please contact Chloe Fernandez.

Consistent with our policy when giving comment and advice on a non-specific basis, we cannot assume legal responsibility for the accuracy of any particular statement. In the case of specific problems we recommend that professional advice be sought.

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