A trade mark watching search is a check made at frequent intervals through all available official journals covering trade marks, looking for the publication of marks the same as, or similar to, your mark in the class or classes of goods or services which you specify, and also for marks identical to yours in other classes.
Why is it important to have a trade mark watching search?
There are several reasons:
- If a third party obtains registration of a mark similar to your own, for similar goods or services, you may have difficulty in preventing him selling competing goods or services under that mark.
- In many countries the trade mark office does not check to see if a new application would conflict with older applications or registrations. It is up to the owners of existing applications and registrations to watch for publication of conflicting later applications and object if appropriate.
- In countries where the trade mark office checks against existing applications and registrations, it sometimes happens that applications proceed to publication despite the existence of earlier rights. The watch should detect such applications.
- In many countries the right to a trade mark is primarily given by registration rather than by being the first user. Thus if you are using a mark in a country without registration for the relevant goods or services, a registration for that mark by a third party may well stop you from continuing to use the mark in that country. A watch should alert you to such a situation arising, though of course it will not tell you of already existing registrations which might conflict.
- The European Union Trade Mark (EUTM)* system makes it even more important to maintain a watch. The EUIPO will not of itself refuse applications even if there is a conflict with older applications or registrations in European Union countries and/or older European Union Trade Marks. The EUTM system thus makes it possible for third parties to obtain trade mark registrations having effect in the UK, even if you have a UK or a EUTM registration for the identical mark for the identical goods/services.
What happens when the watching search detects a relevant mark?
We will write to you with details of the mark and brief comment.
A latest date for action will be given; usually decisions need to be taken quickly.
How much will it cost?
When a new watching search starts, we cannot predict how many relevant marks the watching search will find.
Therefore, for the first year of the watching search, we have a fixed cost.
At the end of that first year, we will review the watching search.
The cost for subsequent years may then vary and this may mean an increase or a decrease in the cost.
In some cases, it may be preferable for the costs of the watching search to be determined by the number of relevant marks found.
We will advise you further about this at the end of the first year.
If any action needs to be taken in respect of marks found by the watching search, such as filing oppositions, then additional costs will be incurred.
Please let us know if you want a watch to be started.
* formerly known as a Community Trade Mark (CTM)
This information is simplified and must not be taken as definitive statement of the law or practice.