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“The Why and How of IP” – a series of short guides

With spring and the dynamizing launch of our new organization, SANTARELLI GROUP, and because a brief reminder of the basics is always worthwhile, we have decided to explore a few themes on a regular basis. Although these may be obvious to some, they are essential for all those wishing to establish an effective trademark policy, whether they be individual applicants, international companies or start-ups.

Here, therefore, is our first practical guide:

Trademark watching: an indispensable tool for a proactive and pragmatic approach to trademarks

  • 1/ Why?

The filing of a trademark application is of course essential, but too many consider this to be sufficient for optimal protection.

The essential function of a trademark is to identify the origin of goods and services. From an economic standpoint, the value of a trademark is thus necessarily linked to the way it is defended.

For example, and contrary to a mistaken belief based on the practice of some foreign IP offices, in the event of a new trademark filing in France or in the European Union, the French IP Office and the EUIPO do not check for identical or similar pre-existing trademarks.

In concrete terms, this means that, without deliberate action by the owners of existing trademarks, two trademarks, even if strictly identical and concerning the same goods or services, can co-exist on the registers in numerous countries.

The only way to keep abreast of new and later filings of trademarks potentially conflicting with your own is thus to set up a watching activity

Such watching, which is a tool for proactive management of your rights, indeed enables early detection of potentially conflicting trademark applications.

It thus opens the possibility for early initiation of claims which may lead to amicable settlement and/or opposition proceedings (contained within short and strict time limits) which are cheaper and faster than actions before a court or actions for revocation.

Trademark owners thereby avoid being informed belatedly, for example when use of a disputed trademark has already commenced and cessation is thus more difficult to obtain, in addition to the fact that, under certain conditions, acquiescence to said use could be found, leading to forfeiture.

  • 2/ How?

Watching may be set up based on words and/or figurative elements.

Trademark law is territorial and so your trademarks must a minima and as a matter of priority and be monitored for your goods and/or services (classes) of interest in all the territories in which they are registered and used.

In case registration/use of your trademarks includes writing in local characters, specific local watching should preferably be set up in addition, for example in Asia or the Middle East.

Watching may also constitute a tool for competitive intelligence, enabling you to be informed of your competitor’s new projects and/or developments in the market.

Such watching may of course be supplemented by other watching activities, for example in relation to domain names, designs, the Trade and Companies Register, or the Internet.

We are at your disposal to assist you in setting up such watching and to offer you a service adapted to your needs.

Perrine Waendendries is an Intellectual property attorney with more than 15 years experience working in IP firms. She jointed Santarelli in 2016 and holds a DESS post-graduate degree in Intellectual Property and New Technologies which she gained at Lille 2 University. Perrine manages worldwide IP portfolios for clients in diverse sectors, and is in charge of organizing training sessions for the EQF trademark program on behalf of the French Institute of IP Attorneys.