Trademark infringement is the scourge of brand owners, and can take many forms, from competitors using confusingly similar brand names for products all the way through to deliberate counterfeiting.
As with many other things, prevention is better than cure, and so there are a few things you should do to protect yourself from infringement.
Register your Trademark
Making sure you have an appropriate trademark for your product, duly registered in all relevant classes in all relevant jurisdictions, is a vital starting point for protecting your brand. In order to identify the best trademark to register, use a trademark search to look at what competitors are doing and to avoid close matches. The last thing you want is to be sued for trademark infringement yourself! Questel’s AI-driven trademark search technology is an excellent tool to ensure you get the right trademark, and can help you avoid trademark infringement further down the line.
Use your Trademark
While demonstrating use of your trademark is not always necessary for registration or renewal, you can be sure that if the worst should happen and you end up in litigation, you will need to be able to show that you are using your trademark in the classes for which it was registered. So use your trademarks!
How to Avoid Trademark Infringement – Monitoring Applications
There are two broad areas in which you need to focus your monitoring efforts to protect your brand against trademark infringement. Firstly, it is critical to have a good overview of applications in the market, across the jurisdictions in which you are active, to ensure you can take timely action against any applications that have the potential to affect your trademarks.
A service such as Questel’s Trademark Watching is useful here, since it allows you to rapidly detect identical and similar trademark applications as soon as they arise, including monitoring new applications across the IP offices.
Once you have identified a problematic application, you can file oppositions to the applications – this is where timing becomes important, since if you act too late you may miss opposition deadlines, which will result in a far more expensive and uncertain outcome.
How to Avoid Trademark Infringement – Monitoring Use
The other area in which it is critical to watch out for infringement is in the market itself. The most serious bad actors are unlikely to go to the trouble of registering their own trademarks, they simply use yours! So a watching service that focuses solely on applications will not help you to avoid trademark infringement.
Looking out for online listings, whether on online marketplaces or on social media or on is an important part of any strategy that aims to avoid trademark infringement, but it is easier said than done. Few in house teams have the manpower or time to monitor every single platform for infringement.
Thankfully, by using an Online Brand Protection service, you can automate much of this work, focusing on the particular areas of concern to your business – those in which you know you are likely to be under threat, whether those be apps, or online platforms, or social media, or domain names for example.
In addition to automating the identification of infringing use of your trademarks, this service can help you take action too, by facilitating takedown requests, test purchases of potentially infringing products, or even litigation.
Once you have identified a potential infringement of your trademark, there are various things you can do to tackle it, depending on the severity of the infringement and the outcome you want.
While litigation is always an option, and may result in trademark infringement penalties for the bad actor, it is an expensive option – many companies will find that other avenues make sense, at least to start with.
For example, if your online brand protection solution identifies a domain name that’s identical or close to your trademark, a domain takedown may well solve the problem – it is much cheaper and quicker than having to go to court. Similarly, many online marketplaces now have robust and easy-to-use takedown procedures, enabling you to remove infringing listings quickly and efficiently for relatively low cost.
However, there will be times when litigation is the only option, perhaps because the infringer’s operation is especially large or because the same bad actor keeps turning up in new places or on new platforms (the so-called ‘whack-a-mole’ effect).
In this instance, there may be robust trademark violation penalties available to you in terms of damages awards and dynamic injunctions, but it is likely to be costly and time consuming to get there.
When preparing for litigation, it may be helpful to use external expertise not just to manage the legal process, but also to ensure robust evidence collection.