Limitations of Global Trademark Monitoring Services
Global trademark monitoring services offer an invaluable and cost-effective service for identifying marks worthy of consideration for possible oppositions or investigations into infringement. However, these services have their limitations – in particular:
- They sometimes generate sightings that are not in fact all that similar;
- They often fail to identify all marks of potential concern – particularly those in Chinese characters;
- They sometimes fail to identify marks that are pending, and only report marks after their gazettal;
- Their services cannot be adapted to help in monitoring new filings by specific pirates.
While SIPS does not directly compete with these global providers, we do offer a service that addresses the above gaps. Our programs are tailored to the specific needs of clients, but will generally include the following components:
- An initial audit of the register to identify registrations and applications that may have been missed by global providers;
- Periodic scans of the register of the PRC Trademark Office and other databases to identify pending applications, thus allowing earlier investigation into use and possible infringing activity. Typically, such scans are recommended every three to five months;
- Tailored searches, including proprietorship searches that can help identify a wider spectrum of marks filed by known infringers, including logos and highly-stylized word marks that might otherwise be missed;
- A review of all marks forwarded by global service providers to filter out inconsequential sightings (a service also available for sightings in other jurisdictions, including Hong Kong);
- If desired, preliminary research and advice in cases which warrant priority attention.
The cost for our service will depend on the marks concerned, the state of the register, and the number of anticipated sightings.
As noted above, we normally start such programs with an initial audit of the register, relying in part on data provided by the client regarding prior disputes and their outcomes. This work can be conducted on a fixed or capped-fee basis, and separate from the fixed fee agreed for periodic scanning.
As also noted above, we can also incorporate into our work plan the delivery of preliminary research and advice for marks that appear to warrant priority attention. Again, the fees for this will depend on the anticipated number of cases, or failing that, a ceiling can be agreed for this work within a given cycle.