Trade marks protect your intellectual property (IP), including your brand, logo or slogan, which are extremely valuable business assets. Registering a trade mark is the first step to securing your IP assets and ensuring that others do not infringe upon your trade mark rights. Sometimes, however, other businesses, perhaps innocently or with motive, seek to infringe your rights. Accordingly, it’s important to know how to protect your IP and trade mark monitoring is one method of doing so. This article will discuss what trade mark monitoring is and why it is important.
What is Monitoring?
There are two distinct trade mark monitoring options, depending on the protection you are seeking. These are:
- general monitoring; or
- specific monitoring.
General monitoring usually includes a search on the Australian trade mark register every three to six months for marks which are similar or the same. These marks could be pending registration or already registered.
Specific monitoring usually involves monitoring a specific trade mark application, for example, if you are looking to oppose registration of a particular mark. All trade mark applications in Australia will be publically available and open for a two month opposition period before registration. In this time, interested parties can oppose the mark’s registration.
IP Australia will raise an objection to the application if it is substantially identical or deceptively similar to marks which are already registered. For example, IP Australia would probably object to an application for the mark ‘BOBBY’S MOWING’ if ‘BOB’S MOWING’ already existed.
However, what IP Australia deems similar may be different to what registered owners deem similar. Therefore, IP Australia does not always object to marks which could be similar.
Apart from monitoring the Australian Trade Mark Register, it is also often useful to conduct other commercial searches. A component of trade mark monitoring includes a commercial search on registers like the Australian Business Name register and the Australian Securities and Investments Commission business names register.
You can also do a simple search through a search engine like Google or Bing to determine if there are other businesses infringing your mark or using a mark deceptively similar to yours on their website or online store. These searches will help you to spot infringers who have not necessarily applied to IP Australia for a registered trade mark.
Why Should You Monitor?
You should engage in trade mark monitoring for a number of reasons.
The Earlier You Take Action, the Easier it is
If someone is infringing your mark, you have a much higher chance of catching it early if you are monitoring. It is also much easier to take action early than to actively defend a mark.
Often, businesses who are infringing are doing so innocently. Therefore, the earlier they are made aware of your mark, the more willing they may be to cease using it. If traders are unwilling to cease using your mark, the more quickly you take action against them, the less likely they are to have built up a considerable market presence. It is much harder to enforce a trade mark against a brand which has existed for a long period and has a built up a considerable reputation.
Protecting your mark is vital because, unfortunately, there is no regulatory body or trade mark police who actively seek out trade mark infringers.
Understand How Your Mark is Used
You should also monitor your trade mark and the words you’ve registered to determine how they are being used. Your customers may use trade marked words or part of your mark in a manner that is descriptive. For example, ‘Kleenex’ has become a widely known and used descriptor for tissues. Understanding how your customers use your trade mark will also assist you in determining if competitors or others are using your registered mark in a descriptive manner.
Be Aware of Pending Registrations
Trade mark monitoring also allows you to be aware of current applications. Once you know which marks others are applying for, you can make the decision to oppose trade marks that you believe will infringe your mark.
Each application will be open to a two month opposition period. Interested parties may oppose the mark within this period. Opposition proceedings are onerous on the opposer and potentially costly. However, often your IP is invaluable and the benefits of retaining protection outweigh the costs involved in opposing other trade marks.
Trade mark monitoring is an important aspect of protecting your valuable IP. Your business may have built up a reputation through your branding. Therefore, ensuring your competitors do not profit off your customers is vital. Trade mark monitoring assists you to actively seek out those who are infringing your mark and take action quickly.