The need for active watching services

By Liezal Mostert on 14 November 2018

CompuMark, an industry leader in trade mark research, recently released a survey indicating that trade mark infringement is on the rise and that it has a tremendous impact on the value of brands. This is true for large multinational organisations and smaller brands and start-ups alike, as it is becoming easier to compete and conduct business around the world. Consequently, competition with regard to the creation of unique brands and the need to protect them is heating up.

When it comes to trade mark infringement, 74% of the respondents involved in the market research survey indicated that they had experienced trade mark infringement in the past year with far-reaching implications, including customer confusion, loss of revenue, loss of customer loyalty and trust and general damage to their brand.

However, the survey uncovered that, despite having a keen awareness of the dangers of trade mark infringement, very few companies have active trade mark watching services in place in order to mitigate the risks of infringement. So, what exactly is an active trade mark watching service?

It is a service whereby key areas of the trade mark landscape are monitored in order to identify potentially infringing marks and uses. This could range from a simple trade mark watch, which would entail monitoring select trade mark registries in select classes to identify new and problematic filings, to a more customised and comprehensive watch, which would monitor new filings, domain names, social media and marketplace usage.

Active trade mark watching services provide brand owners with the advantage of early detection of infringements and conflicting marks. This is beneficial, as the earlier an infringement is detected, the easier and less costly it is to address.

An active watching service allows brand owners to identify conflicts before the expiry of opposition deadlines, many of which cannot be extended. Once a mark proceeds to registration it becomes considerably more difficult and costlier to address, as an application to cancel of the mark will then be necessary. This is even more so if the owner of the infringing mark has started to make use of it, as the costs of rebranding are high and an owner may in such circumstances be more inclined to litigate in order to keep his mark.

In addition, the longer infringing use of a mark is allowed to continue, the more the original brand will be diluted and damaged. A proactive and early response to the threat of trade mark infringement is therefore essential to protect the value of your brand.

In other words, an active trade mark watching service is a key investment in your chosen brand.

Please note that our blog posts are informal commentaries on developments in the law as at the time of publication and not legal advice. You should place no reliance on our blog posts; we look forward to discussing your particular matter with you.