After going through all the effort of registering your trade mark and using it, now comes the hardest part: monitoring the market for potential trade mark infringements.
What is infringement?
Infringement is a violation of someone’s rights, or in trade mark terms, the unauthorised use by a third party of a trade mark that is identical or similar to a previously registered trade mark in connection with identical or similar products/services, for commercial gain.
Infringement is a double-edged sword. You don’t want to infringe anyone’s rights and you don’t want anyone to infringe your rights, not only because of the financial consequences that may arise from such a situation, but also because of the reputational crises that a company may never be able to recover from.
Counterfeiting is a specific type of infringement
A counterfeit is an unlawful total or partial reproduction of a registered trade mark or a mark that is very similar to a registered trade mark on a product or packaging of a product that does not originate from the trade mark holder.
When you come up against a potential infringement, the first thing to do is assess how severe the infringement is: how severe is the infringement?
Is someone placing goods on the market that bear your trade mark but do not originate from your company? Is someone placing their own goods on the market with a confusingly similar sign?
Once you have determined the severity/gravity of the infringement, you can then tailor your enforcement strategy according to/based on that and the strength of your trade mark
It is impossible to avoid infringement from happening, especially if you have an attractive product and brand. However, there are a few different ways of dealing with it when it does. Key to all of them is being prepared for potential infringements and becoming familiar with the rights you own.
The starting point for being prepared to deal with any infringement is to spot “unauthorised use”. Hence, the first step is to monitor the market and the trade mark registers. Several trade mark Offices send out notifications to rights holders when third parties attempt to register similar signs for similar products/services. However, these notifications may not always be enough, and they should be accompanied by a trade mark watch.
Trade mark watch services, which are becoming more and more reliable and less expensive, are an efficient way to spot and quickly react to unauthorised uses of your sign.
