Today, it is becoming more frequent that Trademark (TM) owners
trust their valuable registrations on a Trademark "Watch
Service". These services notify Trademark Titleholders when
there is an attempt towards registering conflicting marks, in order
that these titleholders timely oppose the filing of such adverse
applications. These services are particularly helpful in countries
where Trademark Rights are secured through registration, rather
Often, a Trademark owner seeking to expand his business abroad
discovers that his flagship mark has been already registered in a
country by a "third party." In countries where there is
no opposition system - like Mexico - the whole novelty examination
of a TM application is performed by the Mexican Institute of
Industrial Property (IMPI). If the examiners consider that this
trademark application is similar or identical to a previous
registration or application, they will issue an official action
citing the anticipations. However, this procedure is carried out
solely between the examiner and the owner of the TM application
since TM applications are not published. This way, trademark owners
will not be aware of the trademark applications that are pretending
to be registered. Therefore, they will not be able to take any
actions to prevent, among other things, unnecessary costs. Watch
services can help to orient a TM owner how to proceed and manage
his portfolio in a more strategic way.
One of the advantages provided by "Watch Services" is
that constant assessments are performed over the TM portfolios to
target and avoid conflicting issues. Therefore, the Titleholder can
be informed in a timely matter of any conflicting situation that
might affect his assets.
Watch services are available in many countries; including
Mexico. They may cover one country, several, or even the entire
computerized world. Another advantage offered by this service is
that they are able to customize the level of protection of a
portfolio depending on the importance of a particular Trademark,
since it can be inappropriately used by unknown third parties.
Watch services per se are not expensive given the level of
information provided. It is important to consider that cost must be
calculated depending upon the Trademark value and the level of
adverse activity, so sometimes the entire Watch Service notices can
be costly. However, the invaluable practices of a Watch Service can
help a Trademark owner to protect the purpose and utility of his
products or services.
It is widely recommended to conduct Watch Services periodically
to perform a research on a Trademark portfolio depending on the
owner's needs. This is done to assure that no one has begun to
use an already granted Trademark firstly initiating with a research
checking its availability and secondly, keeping the owner informed
of any deadlines or renewal fees that must be paid in each country
where the Trademark is registered.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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