Below is John McKeown's May 2016 Monthly IP
I would like to continue the discussion concerning developing
effective brand management policies. This month I will discuss
policing the marketplace.
Policing the Marketplace
If a brand owner owns registrations of the brand name in a
number of countries, then reviewing the Trade-marks Journal or its
equivalent in those countries may not be practical. Watch services
can be used to provide this monitoring function. The watch service
will notify the brand owner of potentially conflicting trade mark
applications by sending a notice to the brand owner, who must then
determine what steps should be taken.
The Internet raises a number of concerns. As a result, a policy
should be developed concerning the monitoring and policing of the
Internet. Such monitoring should include the use of
confusing domain names by cybersquatters, criticism or gripe sites,
the use of confusing metatags and key words, linking and framing
and other related activities. Typically third party services are
used to provide monitoring services but this can be costly. In
addition, the focus of the service needs to be selective.
A significant portion of market place investigation can be
carried out by the brand owner through its own employees or agents.
A brand manual or similar policy document should emphasize to
employees the importance of monitoring the market place for
activities which are potentially infringing and to ensure that such
information is brought to the attention of a specific designated
individual within the organization for action. A brand owner may
periodically emphasize to employees the importance of carrying out
such activities and, if appropriate, provide incentives for
locating instances of potential infringement.
If it is determined that litigation will likely be initiated it
is preferable to use the services of a professional
International Trademark Association Annual Meeting
This year's annual meeting will be held in Orlando in May. I
will be attending from May 21-25 and look forward to seeing other
individuals who are attending.
Materials from a recent "refresher training" for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO's examination practices and Supreme Court precedent.
In this recently reported decision, the Court granted Apotex leave to deliver Fresh as Amended Responding Statement of Issues for the reference into AstraZeneca's damages or Apotex's profits, following the Court's decision that the ‘693 Patent is valid and infringed by Apotex.
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