August 16, 2023
Is trade mark monitoring necessary and useful?
Attorney at Law | Certified
Intellectual Property Law Attorney
Yes, absolutely! Watching is not required by law, but it is necessary in order to protect your trade marks effectively.
The benefits of continuous trade mark monitoring include, among others, the following:
- You will receive a regular overview of the identical or similar trade marks filed by your competitors for identical or similar goods and/or services.
- It is possible to react quickly and in a timely manner to a newly filed relevant trade mark that infringes your earlier trade mark.
- You will be informed of the time limit for filing an appeal (usually an opposition) against the younger trade mark found. After the opposition period has expired, it is still possible to take action against the applicant/owner of a younger trade mark, but this often involves higher costs. For example, even after the opposition period has expired, it is usually still possible to file an application for a declaration of invalidity of the applicant’s trade mark with the competent trade mark office on the basis of existing earlier trade mark rights and/or to bring an action before a civil court.
- If you do not have your trade marks monitored, there is a risk that one or more competitors will use your trade marks in an identical or confusingly similar manner for identical or similar goods and/or services, with the result that the target public will mistakenly believe that the goods or services offered by the competitor under that trade mark originate from your company or that there are organisational or economic links between the competitor’s company and yours. This can lead to dilution of your trademarks with significant loss of sales and profits.
- Failure to monitor the market and the resulting unauthorised use of your trade mark by third parties for identical or similar goods over a number of years can, in the worst case, also result in your trade mark becoming a generic term which can then be freely used by third parties, in particular your competitors.
- Some trade mark offices, such as the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt, DPMA), will only examine a trade mark application for absolute grounds for refusal, such as whether the trade mark has distinctive character and whether it is purely descriptive of the goods and/or services claimed. However, the DPMA does not examine whether the registration and use of the trade mark applied for would conflict with earlier trade mark rights of third parties. It is the sole responsibility of the proprietor of the earlier trade mark to ensure that a younger identical or confusingly similar trade mark which infringes his* earlier trade mark is not registered or cancelled and that any unlawful use is prohibited.
- After the filing of an EU trade mark application, the European Union Intellectual Property Office (EUIPO) carries out a so-called EU trade mark search and subsequently informs the proprietor of an earlier identical or similar EU trade mark that his trade mark has been mentioned in the EU trade mark search report of the later EU trade mark application. However, it is then up to the notified proprietor to take action against the later trade mark application, e.g. by filing an opposition and requesting the total or partial refusal of the later EU trade mark application.However, the EUIPO does not inform the owner of the earlier EU trade mark of subsequent national trade marks that have been filed or registered in each of the 27 EU countries. Since a registered EU trade mark automatically enjoys protection in all EU countries, the filing of a later trade mark in only one of the 27 EU Member States which is identical or similar to your earlier EU trade mark and which claims protection for identical or similar goods or services would already constitute an infringement of your trade mark.It therefore makes perfect sense for an EU trade mark to be monitored throughout the EU.
Please contact me if you have any questions.
* For the sake of readability, the simultaneous use of the masculine, feminine and diverse (m/f/d) forms has been dispensed with. All personal terms apply equally to all genders.