Trademark monitoring: Protect and maintain your trademark!

You are wondering if and why trademark monitoring is useful for you?

In our blog post trademark registration: Questions, answers and typical mistakes we have already reported on what we consider to be the biggest mistakes in trademark registration.

In this article you will learn what sources of danger lurk even after registration and how you can avoid them with professional trademark monitoring.

Content

1. The number of trade mark applications is increasing
2. Your trademark is valuable! Preserve it!
3. How can I protect my trademark?
4. The solution: professional trademark monitoring
5. Trademark monitoring: support from the specialist lawyer for industrial property rights
6. Why is the opposition against an infringing trademark so important?
7. Do the trademark offices not check whether there is a collision with earlier trade marks?
Trademark Watch: Summary

1. The number of trademark applications is increasing

In 2018, the German Patent and Trade Mark Office registered a good 72,000 trademark applications (see press release DPMA of 07.11.2018). It is also noteworthy that the number of domestic applications is declining and the number of foreign applications has increased significantly.

"EU-wide over 200,000 trademark applications per year"

The picture is similar at EU level. The European Union Intellectual Property Office (EUIPO) registers approximately 135,000 Union trademarks annually. Since 2013, the number of applications has risen steadily from 114,000 to 146,000 in 2018. Of these, 16,000 registrations have recently come from Germany alone.

Your registered trademark is thus faced with a high number of new applications every year.

Since the creativity of brand names is not unlimited, it is only a matter of time until the value of your brand is also jeopardized by a new application.

2. Your brand is valuable! Get it through trademark monitoring!

Your idea, your company, your brand, these are your biggest investments. This applies to global players such as SAP (estimated brand value 48.9 billion US $) as well as brands of your SME or your web shop. Even if one can argue excellently about the way of calculating the brand equity, it is clear:

The trademark is your (biggest) investment and should therefore be protected against imitations even after registration.

3. How can I protect my trademark?

In order to best protect the trademark, you should defend against any establishment of identical or similar trademarks. This is best done as early and consistently as possible.

Fast action is required. Your trademark protection suffers if you simply accept the existence of similar trademarks over a longer period of time. That means:

Brand monitoring: Keep an eye on the market and your competitors!

You know your market and your competitors best. You can therefore assess for yourself where potential sources of danger are threatening. The usual databases are also helpful. Search for your brandname on Google, Yahoo or Bing and evaluate the hits. You can also search the commercial register for any relevant new entries.

Also check regularly which possibly critical domains are newly assigned. In this way, you can detect possible collisions and take remedial action.

However, self monitoring has the following disadvantages:

• Every search on your own is very time consuming. Time that you could better invest in the growth of your business.
• The priority of your search will decrease over time.
• Conventional search engines can only detect identical matches.
• Similar brandnames, which give rise to a likelihood of confusion, are so often not discovered.
• Nor does it take account of the fact that marks from different languages can be pronounced similarly despite different spellings.
• Word/figurative or purely figurative marks are not covered.
• Infringements are only noticed at all after registration. It is then already too late for an opposition.

4. The solution: professional trademark monitoring

In order to secure your investment in the brand and its business operations in the long term, you are well advised to set up a professional trademark monitoring system. Only through this monitoring can you prevent similar or even identical trademarks from being registered and thus negatively affect the value of your trademark.

5. Trademark monitoring: support from the specialist lawyer for industrial property rights

As a specialist attorney for industrial property rights, we would be pleased to monitor your trademark. We commission a professional search service. This service checks

• the national trademark registers,
• the Internet,
• Social media accounts,
• Commercial register entries,
• New registration for Internet domains, etc.

automated and regularly. We receive immediate knowledge of potential threats to your brand and draw up concrete recommendations for action.

In this way we are able to become active even before the child has fallen into the well. For example, we can object to the registration of the opposing trademark and thus prevent its entry in the trademark register.

6. Why is the opposition against an infringing trademark so important?

If your trademark is infringed by a competitor, opposition is the means of choice. By filing an opposition you can prevent the registration of the opposing trademark. It helps you save money. The official fees for the entire opposition procedure amount is 120€ for a DE trademark or 320€ for an EU trademark. The opposition can only be filed within 3 months of publication of the registration. If the trademark is already registered, you must file an action instead of the opposition.

This is then followed by ordinary court proceedings, if necessary over several instances and at significantly higher legal costs. While the opposition proceedings usually take a few months, you are threatened with years of legal disputes. In addition, it has proven to be advantageous in practice to ward off possible infringements even before trademark registration.

Why? Well, at the time of application, the applicant has usually not yet had to pay too much and can choose a new brand name relatively cheaply. If, however, he has made further investments in confidence of the registration, he will try to defend these investments further.

7. Do the trademark offices not examine whether there is a conflict with earlier trademarks?

Unfortunately no, the trademark offices have a simple mission. They are to register trademarks. Their examination mandate ends with a finding that there are no absolute grounds for refusal, such as

• The mark is devoid of any distinctive character
• Brandname is exclusively descriptive
• Trademark consisting of signs which have become customary in the current language (Paragraph 8 MarkenG)

A check for possible trademark collisions is not carried out.

Trademark Watch: Summary

Professional trademark monitoring has the following advantages:

• Your monitoring effort is limited to reading our mails
• You will be informed of the application before your competitors.
• You can oppose the trademark application. Warnings are not required
• There are no personnel costs for monitoring
• The consulting costs are reduced considerably (contradiction is more favourable than a warning)
• Your competitor's willingness to resist is low, as he usually only makes further investments after the trademark has been registered.
• Colourmarks are also monitored.

Assign us to monitor your trademark today!

picture source: © cherezoff / panthermedia.net