Once you've registered your trademark, you have the peace of mind that your brand's assets have legal protection. But the question arises, how you can make sure no infringements are happening in the marketplace that hasn’t caught your attention? It's up to you as the trademark owner to monitor possible violations and bring them to the attention of the authorities to have your rights enforced.
There are a couple of ways you can do this. The first is as simple as conducting Internet searches using Google. Type in the name, or a range of similar ones, and see what other traders come up that are using the terms. This is a way of monitoring the marketplace to identify possible infringements early. That is, before they create confusion in the market, or begin to benefit from the goodwill your brand has earned. It's also very simple to set up Google alerts (in your Google settings), which will then email you a notification when the terms you have highlighted are used anywhere on the Internet.
It is also important that you keep yourself abreast of any trademark applications that may be similar to yours. You want to know when these applications are filed so that if accepted by IP Australia you can lodge an opposition to the application. If you miss the window and the owner is granted registration of the trademark, you will need to go to court to try and cancel it. This would be a much higher cost than filing an opposition before the trademarks office.
Your best bet is to try and stop the trademark application before you have to invest the cost of court proceedings. Again, there is a simple online solution to this problem, the ATMOS search tool will allow you to check applications. The Official Journal of Trade Marks will also publish the dates that marks are advertised as accepted. The advertisement date starts the two month opposition period.
It's recommended you undertake these searches at least once a month to keep on top of things because the opposition period in Australia is two months from the time of the acceptance being advertised.
Another option is to use software termed a ‘watch service' to monitor trade names on your behalf. It can conduct checks locally and internationally. The software will alert you every time a similar trademark is accepted or advertised. It is a reasonably inexpensive and very effective solution if you feel that self-monitoring is not sufficient for your circumstances, particularly if you need to monitor applications filed in multiple countries.
The nature of the monitoring you put in place will affect the pricing, but a watch service via our associates’ software will cost about AU$500 per year. This is for Australia only. If you want the TM database in Australia manually monitored for filings and accepted marks that would concern you, you may look at a monthly fee of around AU$400. This is per trademark. We can provide estimates for additional countries and/or marketplace monitoring on request.
If you discover a similar mark in use by using these tools, it may be worthwhile taking a ‘wait and see' approach before you act. You want to determine if the person has already used the mark. If they haven't, it may mean they have only filed the trademark application for example. If that’s all they have done, IP Australia will examine it, and they will likely issue that person with a report stating that the mark is too similar to yours to proceed if it is indeed confusingly similar to your own rights. In this case, the applicant will probably abandon the application and the brand, and your mark will be safe from infringement once again. No further action would be needed.
If a similar trademark is accepted for registration, you will have time to approach IP Australia to file an opposition, stating your reasons why that mark should not be registered. Unfortunately, oppositions are not simple to process, and you should contact a trade marks attorney before you proceed. You will ultimately need to provide evidence that establishes your grounds for the opposition in order to succeed.
If you stumble across a brand in the marketplace you feel is too similar to yours, it's also worth consulting a trademark attorney to determine if it is an infringement. If the attorney confirms your fears, they will draft a letter of demand on your behalf. You need this specialist advice, because while it may appear to be a clearcut infringement to you, it may not be a breach according to the law. This is important because sending a letter of demand that incorporates groundless threats of legal action can backfire. Some of the issues to look out for are whether or not the alleged infringer is trading in the same country as you, or if they are offering customers similar products or services as your brand or company.
It can be worrying as a business owner to know that there may be other traders out there attempting to benefit from the name, logo, and other assets of your brand, but now you know how to keep yourself in the know.