The Importance of Trademark Monitoring
The Importance of Trademark Monitoring
According to our firm’s statistical data, in recent years, as the National Intellectual Property Office continues to strengthen its regulation of malicious trademark registrations, the malicious registration of trademarks identical or highly similar to those of genuine right holders has gradually been curbed. However, malicious registrants have not completely abandoned their tactics of imitation and plagiarism. Instead, they have adopted increasingly covert methods such as altering the word order, using homophones with different characters, or splitting and recombining the original trademark to register new trademarks. If these malicious right holders use these registered trademarks in the market, and the genuine right holders do not notice in time, it can have a significant impact on the genuine right holders' reputation and other aspects. To protect the trademark rights of the genuine right holders to the greatest extent, it is essential to detect and eliminate such malicious registrations early on.
The most effective way to detect malicious trademark registrations early is "trademark monitoring."
What is Trademark Monitoring?
Trademark monitoring refers to the continuous monitoring of trademarks applied for by others that are identical or similar to the genuine right holder's trademark. It allows for the timely detection of malicious registrants who attempt to exploit the genuine right holder's reputation, maliciously registered trademarks, and potential or existing infringements. Trademark monitoring also includes monitoring the right holder's own trademark, making it easier to manage and maintain their trademarks.
Monitoring Content — Monitoring Others’ Trademarks
1. New Applications: Monitor the status of similar trademarks that are still under application review. Once the status is confirmed, take targeted actions promptly.
2. Provisional Approval Trademarks: For trademarks that have passed the preliminary examination by the Trademark Office, file objections to prevent malicious applications from being registered.
3. Registered Trademarks: For already registered trademarks, take actions based on specific registration conditions (such as registration time, malice, and use). If necessary, multiple measures can be applied simultaneously.
4. Monitoring Specific Applicants: If the same applicant repeatedly registers trademarks identical or similar to the genuine right holder's trademark, monitor that applicant separately. This allows for the earliest possible detection of similar trademarks and timely action against them.
5. Infringement Behavior: Analyze the collected information to determine if infringement exists. If infringement is confirmed, take immediate and effective measures to protect the genuine right holder’s interests.
Monitoring Content — Monitoring the Genuine Right Holder's Own Trademarks
1. Trademark Status: If a trademark is subject to opposition, invalidation, or cancellation requests, the right holder can be notified immediately, allowing ample time to prepare evidence to respond to these requests.
2. Trademarks Over Three Years Old: Depending on the importance of the trademark, decide whether to re-register it after three years of registration.
3. Trademark Renewal: When there are many trademarks, it’s essential to track all important time points for each trademark, though this is often overlooked. Trademark monitoring can ensure timely renewal before the expiration of the trademark's validity period, preventing the loss of trademark rights.
How to Conduct Trademark Monitoring
Typically, trademark monitoring is conducted through a combination of professional monitoring tools and manual checks, as well as an integration of both online and offline methods to ensure nothing is missed due to relying solely on one method.
In summary, trademark monitoring is an ongoing and continuous task that plays a vital role in protecting the genuine right holders' interests. Effective trademark monitoring can reduce the likelihood of rights infringement and help maintain and enhance the brand's image and value.
Author Introduction
Caroline He Partner
Business Areas: Trademarks, Domain Names, Copyright
She specializes in trademarks and copyright law. With 15 years of experience in the intellectual property field, she has represented numerous well-known global companies, universities, individuals, and organizations from Europe, the US, and other regions in registering, licensing, transferring, maintaining trademarks and copyrights in China, as well as combating malicious registration that infringes on client IP. She is well-versed in domestic trademark protection and dispute resolution strategies, and is skilled in IP overall strategies and solving various complex issues.
