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 than use.
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.
