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How to detect infringements quickly for expedient conflict resolution

by Liezal Mostert on 14 November 2018

You have finally registered your mark and received the registration certificate. Now what? Do you simply file it away somewhere and wait for the renewal date to come up, all the while being safe in the knowledge that the registration will prevent others from using your mark?  Unfortunately, it is not that simple. In exchange for the exclusive rights to your mark, the trade mark owner has to mange and care for those rights, otherwise he runs the risk of losing the investment made in a trade mark.

The next question is of course, what does it mean to care for your mark and the accompanying rights?  

It essentially means that a trade mark owner must take care to monitor the market for any unauthorised use of its marks or confusingly similar marks, as well as maintaining the distinctive nature of its mark.  Many trade mark owners believe that the trade marks registry will ensure that identical or similar marks do not proceed to registration or that, the mere fact that a mark is registered, will prevent others from using the mark. Regrettably this is not the case and the sole responsibility thereof lies with the owner of the trade mark. 

Fortunately, with a little help and planning, caring for your mark could be a process that runs seamlessly in the background of your business. In this article, we will give a brief overview of some of the strategies that can be employed to actively protect your trade marks. 

Active trade mark watching 

Active trade mark watching is a service whereby we can actively monitor various trade mark registries worldwide to identify new and problematic trade mark filings by third parties and potential corresponding trade mark infringements.  

Active trade mark watching provides 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. 

It furthermore allows trade mark 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 use it, as the costs of rebranding are high and the infringer may in such circumstances be more inclined to litigate in order to keep the infringing marks. 

Domain name watching

Similar to trade mark watching, our active domain name watching service allows you to be notified of conflicting domain name registration in various top-level domains and country code top level domains. 

Having an effective online presence is essential for any brand with domain names being more important than ever. However, at the same time, this has increased the risk of infringement. As with trade mark watching, domain name watching provides an immediate benefit as infringement of your mark can be detected early, which means that a trade mark owner can act before potential clients or customers are redirected to the website of an infringing domain name. 

Company name watching

The Companies and Intellectual Property Commission does not review the register of trade marks when approving new company names.  Consequently, many trade mark proprietors find themselves in a position where a third party, which may be a competitor, has commenced use of a company name and marks corresponding to that name.  Allowing your trade mark or even a confusingly similar version thereof to be used as a trading style by third parties may harm your trade mark and lead to a dilution of your rights.  

Our company name watching service, therefore, allows you to monitor the register of companies to be alerted to any potentially conflicting names. 

Registration with customs authorities 

The global trade in counterfeit goods has reached staggering proportions with The Organisation for Economic Cooperation and Development estimating that, in 2005, the global trade in fake or pirated goods was worth around USD $ 200 billion. South Africa in particular has become a popular market for counterfeiters as it has major ports and offers access to Sub-Saharan Africa. 

Counterfeiters not only target luxury goods and counterfeit products can range from cigarettes, DVD's, household items, children's toys and products, pharmaceuticals, to food and wine products or any other conceivable product. 

It is not only a loss of revenue that results from a product being counterfeited, but it is immensely damaging to the value of the brand itself, as it impacts negatively on the reputation and goodwill of the brand. 

An important tool to protect against counterfeit products reaching the market is to register your intellectual property rights with Customs Authorities.  This will allow them to search and seize any goods suspected of being counterfeit. After the seizure of such goods you will be notified and have an opportunity to act against the infringer.  We can assist you to make application for such a registration.  

In short, the above strategies and services are designed to allow you to prevent damage to your mark by detecting any unauthorised use thereof.  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. 

© Swart Attorneys | Swart Attorneys is the trading name of D Swart & Associates Incorporated, a company registered in South Africa with registration number 2003/021176/21.