To protect a brand name, we can register the trademark with the local Intellectual Property Office. To make use of a trademark, we can assign or license it. And to safeguard a trademark and stop any third party from registering a similar one, we can do so with the help of Trademark Watching (as known as Trademark Monitoring).
What exactly is Trademark Watching? What are the benefits of making use of a trademark watch service?
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What is Trademark Watching?
Simply speaking, Trademark Watching/ Monitoring focuses on trademarks of your choice, keeps an eye on new trademark applications, and alert you if any application with similar trademarks appears. If so, you might wish to take appropriate actions to stop them from registering. That is particularly useful in some countries, e.g. the United Kingdom, the European Union, where the local IP offices do not actively refuse applications even though there are existing similar trademarks.
Before understanding the gist of trademark watching, let us recap the procedures of a trademark application in general:
File an application
Examination by local IP offices
Publication Period
Registration of Trademark
Assuming your trademark is registered. Now a similar trademark has been filed for registration. Procedural-wish, it will have to pass both 1) Official examinations (IP offices will check if there is any existing similar trademark) and 2) Publication Period (allowing any third party to file an opposition to the application)。
Sometimes, even though you consider the trademark in the new application to be similar to yours, the IP office might not think alike and still approves the application. Under that situation, in order to stop the new trademark from registering and conflicting with yours, you can then file an opposition against the application within the publication period (3-month in Hong Kong), forcing the opposite party for response.
Assuming your trademark is yet to be registered. Unfortunately your ex-business parter goes on to file a trademark application without seeking your consent, and the application has been approved by the local IP office. What can you do? Similarly, you can take the chance of publication period and file an opposition against the application.
In both of the above two situations, it is the trademark owner’s duty to stay on guard on any new application which could be detrimental to the owner’s trademark right. But in reality, an owner would not have so much to keep an eye on all the new applications, especially when the jurisdictions involved are more than just Hong Kong. In that case, trademark watch/monitoring service could be of great help, by monitoring all the applications in specific countries.
How Trademark Watching is conducted?
To utilize trademark watching, the trademark owners will have to provide the following information：
Image of the trademark to be monitored
Class (and the items) of the trademark to be monitored
Target jurisdictions to be monitored
Basically, simply provide the information of the trademark to be monitored will do.
We will input these information into the AI monitoring system. Every results will be reviewed and filtered by AI, and then by our experienced consultants, to evaluate if the new applications would pose risks to the trademark owners. The information of those applications, together with professional advices on how to do next (for example if opposition should be filed), will then be sent to the owners. The frequency of the reports could be every week or even daily.
How Trademark Watching Could Benefit Your Business
It is not uncommon to encounter situations that trademark rights could be lost (sometimes forever) when the trademarks are being registered by a business owner’s own partner or a rival company, as companies overlooked to protect their own trademarks. As it is not always the case that you could get back your trademark’s registration and right, you might end up have to change your brand name or logo, resulting waste of time and money, or worse, even lost of clients.
By making use of Trademark Watching service, trademark owners could then focus on developing the business and at the same time, keeping an eye on upcoming new brands and competitors. Not only can owners protect their own trademark rights, but they can also prevent brand names with similar names or logos to enter and compete in the same market, avoid costs on trademark disputes in future.
Is Trademark Watching for Me/ My Business?
If the following conditions apply to you or your company, you can consider making use of the Trademark Watching service to safeguard your rights:
You own registered trademarks, and would like to prevent any third party from registering similar trademarks; or entering the same market of yours
You are using an unregistered trademark but would also like to prevent registration of your brand by anyone else
You plan to enter a certain market and wish to keep monitoring the situation in that market
No matter which of the above describes your situation, starting your own Trademark Watching portfolio would be an enormous help for your business and can effectively safeguard your trademark right, saving the hassle of constantly monitoring by your own.
Actualis: Professional AI Trademark Watching Service
At Actualis, we focus on providing one-stop comprehensive trademark solutions. Our extensive experience comes from handling hundreds of trademark and copyright cases, and our vast knowledge on Intellectual Property comes from our services provided to companies in different industries.
A featured service of ours, our Trademark Watching Service is a combination of cutting edge AI technology and our extensive trademark case experience, and is an incredibly affordable and effective way to protect your trademark rights.
If you have any trademark or intellectual property-related enquiry, just feel free to contact us at +852 9545 3177 (phone/ Whatsapp), or through email at ip@actualisip.com.