Brand monitoring

A trademark is a distinctive sign which confers on its owner an exclusive right of intellectual property and thus allows him to oppose the use of his trademark by third parties, without his prior authorization.

It is a decisive intellectual property title in business life in that it allows the consumer to determine the origin of the product(s) and/or service(s ) designated by a company.

Therefore, the owner of a trademark must exploit it (a trademark registered more than five years ago being vulnerable to a lapse action for non-use) but also defend it against third party fraudulent uses as soon as possible.

This is why it is strongly recommended that intellectual property rights owners monitor trademark databases and the Internet in order to detect any new registration or use of their sign, or of a similar sign, by a third party.

Trademark monitoring is a practice that consists of conducting a legal watch around one or more trademarks.

This practice is very useful for trademark owners in order to complete and optimize their strategy of protection and defense of their rights.

Indeed, when a trademark is filed with the INPI, the Office does not check whether the trademark is available or not before publishing the application.

It is therefore essential for a trademark owner to make sure that nothing infringes on his rights after the registration has been made, and if necessary, to act as quickly as possible.

Thus, trademark monitoring mainly consists of checking:

• Trademark registers, in order to ensure that no identical or similar signs for identical or similar products and/or services have been filed subsequently;

• The Trade and Companies Register, in order to ensure that no company has subsequently been registered with the same or similar name for the same or similar activities;

• WHOIS databases, to ensure that no identical or similar domain names for identical or similar products and/or services have been registered subsequently.

However, this monitoring can also be more global and consist of more in-depth searches on search engines, forums or even social networks in order to monitor trademark awareness and detect possible acts of and verify that there are no acts of harassment against it unfair competition or even counterfeit.

The implementation of a trademark watch is very advantageous for a trademark owner because it allows him to react quickly and thus to stop possible infringements before financial or reputational consequences are felt.

Indeed, during a trademark watch, new trademark applications published in the dedicated registers are flagged and subject to an opposition period of 2 months before theINPI and 3 months before the EUIPO.

If one of these applications is likely to infringe on the owner of a trademark, the latter can immediately file an opposition, before the trademark is registered.

This saves time and money, since the procedure before the Offices is faster and less expensive than before the Courts.

However, a trademark owner can also opt for an amicable solution such as sending a letter of formal notice to the applicant concerned, which is sometimes sufficient to resolve the situation.

Trademark monitoring can be done in a variety of ways, however, it is recommended that an intellectual property professional (lawyer or counsel) in order to benefit from support and advice on the real risks of the elements identified, the defense strategy to be considered or the chances of success, if any.

The Bouchara firm assists you in particular in :

• Searching for new trademarks, company names, domain names, which could infringe your rights, in France and abroad (known as prior art search);
• Searching for acts on the Internet that infringe on your trademark;
• The implementation of a strategy to protect and defend your trademark;
• The formalities for filing your trademarks, including (drafting the wording of the classes of product(s) and/or service(s), analysis of the distinctive character of the sign etc…);
• The follow-up of the registration procedure of your trademark before the Offices(INPI for French trademarks, EUIPO for European Union trademarks etc…) until the issuance of the Registration Certificate;
• The response to official notifications issued by the Offices where applicable;
• Confusion analysis;
• Preparation of demand letters;
• The oppositionprocedure
• The nullity action is based on the absence of serious use of the trademark or on the loss of its distinctive character;
• Legal actions before the Courts (seizure procedure, counterfeiting action, unfair competition action, etc.);
• The management of your trademark portfolio (registration, renewal etc…);
• More generally, the protection and defense of your distinctive signs against fraudulent exploitation by third parties.