The Importance of Trade Mark Watching

Why Trade Mark Watches (Monitoring Published Trade Mark Applications) is Important for Brand Success

Securing a trade mark through registration should be a key objective for any brand.

Registration signals the start of formal protection for a company’s brand name, logo or product/service identifier.

However, registration alone does not safeguard a brand against misuse or infringement.

Trade mark rights must be actively defended. This is where trade mark monitoring becomes crucial.

Understanding trade mark monitoring

Trade mark monitoring (or trade mark watching as it is otherwise known) is the practice of routinely scanning trade mark registers and related platforms to identify marks that are identical or confusingly similar to an existing registered trade mark and which are aligned with the goods and services of interest.

These services are designed to alert brand owners to potential threats before they materialise into larger problems.

Monitoring can cover various jurisdictions and it can be tailored to specific goods and services.

Why trade mark monitoring matters

Monitoring helps to protect both the legal and commercial integrity of a brand.

Under the Trade Marks Act 1994, a registered mark grants the proprietor exclusive rights.

However, those rights do not enforce themselves. A mark can be undermined by a competitor’s attempt to register or use a similar mark.

Without timely objection, rights to oppose or sue for infringement may be lost.

In the UK, the window to oppose a conflicting application is typically two months from publication, extendable by one month.

Miss this period and when it lapses, the cost and complexity of challenging the mark increases significantly.

A watch service ensures that owners are informed in good time to take appropriate action.

The limits of the UKIPO search

It is a common misconception that once a trade mark is registered, the UK Intellectual Property Office (UKIPO) will prevent others from registering similar marks.

When a new trade mark application is filed, the UKIPO does conduct an official search of the register, but it is very basic and the search may not detect visually or phonetically similar marks.

Just because the UKIPO may not highlight an earlier right, that does not mean the earlier right is any less relevant.

A trade mark watch, on the other hand, will focus far more broadly.

Even when an earlier right is identified, the UKIPO will not block the later application.

Instead, a notification is issued to the earlier right owner bringing the later application to its attention. The earlier right owner can then formally challenge the application if it so wishes.

If the contact information recorded at the UKIPO register is outdated or an independent trade mark watch is not in place, that opportunity may be lost.

Monitoring also addresses the broader problem of enforcement in jurisdictions outside the UK.

Different offices apply different procedures. Some do not notify earlier right owners at all. Others may provide extremely short and non-extendable deadlines for opposition.

Trade mark monitoring can close these gaps by ensuring consistent surveillance across key territories.

Detecting infringement early

The commercial value of early detection cannot be overstated.

A similar mark filed for registration by a third party is likely to be in use, or there is a plan to use it. When in use, this could dilute the earlier brand’s identity, confuse consumers and divert revenue.

The presence of a later conflicting mark on the same register is a diluting factor.

In commercial use, if infringement is not addressed promptly there is a risk of reputational harm and erosion of market share.

Counterfeit goods in particular can present serious risks including safety concerns and damage to consumer trust.

Monitoring is essential not only for litigation purposes but also for maintaining licensing relationships.

Licensees will expect that their investment in a brand is protected, which includes an ability to take action quickly against infringers.

If counterfeit products or conflicting brands enter the market, licensees may see reduced sales or even breach of contract if the brand owner fails to enforce its rights.

Scope of a trade mark watching service

As part of the trade mark watching service, new applications filed with trade mark offices and then published for opposition purposes are screened, with those applications identical or similar to the watched mark being flagged.

These later applications may include word marks, logos, device marks or a combination of these.

Trade mark watching services can be tailored to the specific needs of the brand owner.

The scope can be as narrow as the watching for one mark covering one class of goods or services in a single jurisdiction, or as broadly as a global watch covering multiple classes.

In addition to trade mark registers, a trade mark watching strategy can include domain name registrations, online marketplaces, social media platforms and company registers.

Cybersquatters and copycats often seek to exploit gaps between registered rights and digital presence. Monitoring across digital platforms is increasingly necessary to counteract this risk.

Legal basis for ongoing monitoring

UK trade mark law implicitly expects rights holders to act with vigilance.

Failure to oppose known conflicting marks in a timely manner can sometimes result in the loss of a brand owner’s right to object later.

In many jurisdictions, if a conflicting mark is used openly and without objection, the earlier rights holder, who knows about the conflicting mark, may be seen to have acquiesced.

In the UK the ability to challenge the use of a later registration may be extinguished after five years if it can be shown there was knowledge of that use during this time and that the owner had failed to act.

The advice speaks for itself. A proactive approach through trade mark monitoring is an essential tool in a brand owner’s arsenal.

Commercial considerations

Trade mark monitoring also represents sound commercial practice.

Brand equity is often a business’s most valuable asset.

The reputational damage caused by brand misuse is not always quantifiable, but its effects are real.

Early intervention allows brand owners to resolve potential conflicts through opposition proceedings, cease and desist letters or negotiation.

Sometimes this avoids the need for lengthy litigation.

In many industries including the pharmaceutical, technological and fashion industries, timing is crucial. The launch of a new product under a conflicting brand name could result in consumer confusion and lost market share.

Monitoring provides a first line of defence, allowing companies to prevent market disruption.

Developing an effective strategy

An effective monitoring strategy should be tailored to the size, scope and budget of the brand owner.

A global business with a wide product range may need extensive coverage across multiple territories and classes.

Smaller companies may focus on core jurisdictions and key brands.

In both cases, it is important to identify priority marks and allocate monitoring resources accordingly.

It is also important to manage the volume of results generated.

A broad watch will produce numerous alerts, many of which may not be actionable.

Working with a legal adviser is crucial to ensure that notifications are reviewed efficiently and that only those with genuine risk are escalated.

Cost vs. benefit

Some brand owners question the value of monitoring, especially where budget is constrained.

However, the cost of addressing infringement after registration can far exceed the cost of prevention.

Invalidity proceedings, rebranding exercises or litigation can have a significant impact on commercial operations.

Monitoring is an investment in preserving both legal rights and commercial value.

Even if no action is taken on a particular alert, monitoring gives visibility over competitor activity and market trends.

It may highlight a new entrant in the market or a shift in branding strategies by others in the sector.

This information can support broader business planning and strategic decisions.

The role of monitoring in long-term brand protection

Trade mark monitoring should not be prioritised as a ‘nice to do’ for businesses serious about brand protection.

We see it more as a ‘need to do’.

It is a fundamental component of an effective intellectual property strategy.

Watching services provide early warnings, reduce enforcement costs and support long-term brand integrity.

They offer legal protection, commercial foresight and reputational security.

A registered trade mark is only as strong as the protection enforced around it.

Without monitoring, that protection is compromised.

With it, brand owners gain the confidence to grow, expand and defend what they have built.

If your business would like to set up a trade mark watch in order to monitor the competition then talk to us today. You will surprised how little this service costs for the sake of peace of mind.