Trademarks

Effective

Monitor.

Trademark monitoring (also known as trademark monitoring) is a systematic and ongoing search in the trademark registers of relevant countries. The aim is to identify new trademark applications that are identical or confusingly similar to your existing trademark. Monitoring is software-supported and, depending on the scope, includes national and international trademark registers. It is crucial that the hits identified are then legally evaluated in order to determine whether a collision actually exists and which measures are appropriate.

When registering a trademark, both the German Patent and Trademark Office (DPMA) and the European Union Intellectual Property Office (EUIPO) only examine the so-called absolute grounds for refusal, for example whether the trademark is sufficiently distinctive or whether it is descriptive or misleading. An examination of whether older identical or similar trademarks already exist (so-called relative grounds for refusal) does not take place. This also applies to most other major European registers, including France, Italy, Spain and the Benelux countries. These offices merely publish the application and leave it to the owner of earlier laws to take action in opposition proceedings.

However, there are also countries whose trademark offices examine relative grounds for refusal ex officio. These include the USA (USPTO), China (CNIPA), Russia (Rospatent) and Canada (CIPO). In these countries, examiners actively search for conflicting earlier trademarks and can reject the application if necessary.

A few national offices within the EU also examine relative grounds for refusal ex officio: Portugal, Ireland, Finland and Sweden. Poland, the Czech Republic and Slovakia, however, have abandoned this practice in recent years and have switched to the opposition system. In numerous MENA countries (Middle East and North Africa), the offices also examine relative grounds for refusal ex officio.

However, it is important to understand that even in countries with ex-officio examination, this does not offer complete protection. The official examination can deliver incorrect results, overlook hits or assess the likelihood of confusion differently than the trademark owner. In addition, a rejected application can still be enforced in appeal proceedings. However, in the majority of economically significant legal systems – particularly in Germany, the EU and most EU member states – such an examination does not take place at all. It is therefore essential for every trademark owner to carry out their own trademark monitoring.

The opposition periods vary considerably around the world. In Germany (DPMA) and the EU (EUIPO), the time limit is three months in each case, whereby at the DPMA it starts from publication of the registration and at the EUIPO from publication of the application.

In many other economically important countries, the time limits are significantly shorter. In the USA (USPTO), for example, the opposition period is only 30 days from publication in the Trademark Official Gazette. In Brazil, it is 60 days. In Japan, South Korea, the United Kingdom, Canada and Australia, the deadline is only two months. China, like the EU, grants three months, while India grants four months. In some countries (e.g. the USA and the United Kingdom) extensions can be requested, while in other countries the deadline is strict. If the opposition deadline is missed, the opposition is inadmissible and the only remaining option is the more time-consuming cancellation or nullity proceedings. Due to these considerable differences in the time limits, professional, timely trademark monitoring with international coverage is essential. After all, if you only find out about a conflicting application weeks after publication, you may have already missed the opposition deadline in countries such as the USA or Brazil.

If you do not challenge a conflicting trademark within the opposition period, it will be registered and coexist with your trademark. In the worst case, the coexistence of similar trademarks can lead to your trademark losing its distinctive character and being diluted. In addition, claims may be forfeited if the owner of an earlier trademark has tolerated the use of a later trademark for a period of five consecutive years despite knowing of this use. This means that anyone who knows of an infringement and still fails to act may lose the law to take action against the infringer. Although a duty to monitor the market is not generally recognized by case law, knowledge gained through trademark monitoring always triggers the need to act.

In principle, several forms of monitoring can be distinguished. Identity monitoring involves searching for exactly identical trademarks in the same or similar classes of goods and services.

Similarity monitoring goes one step further and also covers phonetically, visually or conceptually similar signs that could give rise to a likelihood of confusion.

In addition, there is competition monitoring, in which the trademark applications of certain competitors are specifically monitored.

For trademarks protected in Asia, there are also specialized monitoring services for local characters, for example in China, Japan or South Korea. KPW offers all these forms of monitoring.

KPW carries out professional trademark monitoring in all countries worldwide. The monitoring covers the respective national registers and international registers.

For the Asian region, we also offer specialized monitoring in local characters – available for China, Hong Kong, Japan, South Korea, Taiwan, Indonesia, Malaysia, the Philippines, Singapore, Thailand and Vietnam, among others. These translations are carried out by native speakers who understand the respective characters.

If our monitoring software identifies a potentially conflicting new application, this hit is not simply forwarded, but is first legally assessed by our team of experts. We check whether there is a relevant similarity between the signs and the goods or services claimed and whether there is a likelihood of confusion. You will then receive a notification from us about the relevant hits with a concrete assessment and recommendation on how to proceed, for example whether an opposition is appropriate, a cease and desist letter is possible or whether monitoring is sufficient for the time being.

Yes, brand monitoring is particularly recommended for small and medium-sized enterprises (SMEs). The value of a trademark is independent of the size of the company. A registered trademark is usually one of the most important intangible assets of a company. SMEs in particular often do not have the resources to regularly search trademark registers themselves. Moreover, they cannot financially afford costly legal proceedings that could have been avoided by an early response. Thanks to KPW’s all-inclusive prices, professional monitoring is also economically viable for smaller companies.

A trademark search is a snapshot in time. It checks at a certain point in time – typically before a trademark application is filed – whether identical or similar trademarks already exist that could conflict with the application.

A trademark watch, on the other hand, is an ongoing, permanent search that is carried out after your trademark has been registered. It continuously checks whether new trademarks are applied for that could conflict with your existing trademark.

Both instruments complement each other: the trademark search secures the application and trademark monitoring warrants the ongoing protection of the registered trademark.