Trademark Watching or Trademark Monitoring is essential for successful IP portfolio maintenance. Despite the fact that existing trademark protection system in both Ukraine and Russia includes examination on relative grounds, additionally to absolute ones, that in most cases protects right owners from later registration of identical or similar trademarks by third parties.
when is trademark monitoring necessary?
1. There are situations when registration of combined trademarks (word element + image) with identical word elements but different graphic representation takes place. In such a way, the word element of the previously filed trademark loses its distinctive character as it ceases being associated exclusively with the owner of the earlier trademark. Therefore, the trademark loses its individualizing function.
2. Combined trademarks may contain no similar word or figurative elements (as shown in the example below); however, the trademarks may still be perceived as similar because of the common stylistics, form or structure and, at a quick glance, may mislead or deceive customers.
3. Registration of similar trademarks for homogeneous goods may also be as follows:
- registration of similar figurative trademarks;
- registration of trademarks with similar semantic meaning.
Registration of similar trademarks in different classes of the Nice Classification but in respect of homogeneous goods/services takes place quite often as well.
Besides, the possibility of similar trademarks registration may be caused by a human factor as well as relatively subjective opinion of an expert.
Trademark watch service allows trademark owners to:
- monitor trademark applications and registrations by keyword, sign, elements of sign;
- initiate timely actions against trademarks which may potentially infringe your rights;
- avoid possible losses of profit as consequence of the unlawful use of identical or similar trademarks by third parties;
- prevent infringements in the administrative, pre-trial procedures;
- minimize cost and time involved in litigation actions;
- monitor the activities of competitors and the market as a whole.
Therefore, watching services is an important supplementary tool to ensure strong trademark protection strategy.
MSP Watching Services are performed by specialized software with different sorting and filtering capabilities comprising the most actual data from the following registers:
- Published Ukrainian trademark applications, which have passed formal examination;
- Ukrainian trademark registrations;
- International registrations designating Ukraine;
- Russian trademark applications;
- Russian trademark registrations;
- International registrations designating Russia.
Trademark watch report includes detailed information on possible conflicting filed or registered trademarks; information on the applicant/rightholder; timeframe for filing opposition; expert opinion regarding similarity of conflicting trademarks; information on applications/registered trademarks in a particular class(es) of goods and services or applied/registered for homogeneous goods and services. Please contact us for any additional information or ordering sample of a search report.