Why Monitor Your Trademark?
Today, monitoring your own (or even someone else’s) trademark has never been easier, thanks to subscription-based trademark monitoring services. But why is it beneficial, and when should you take action? We spoke with Ann-Charlotte Söderlund Björk, partner and attorney at GOZZO Advokater, who has over 30 years of experience in intellectual property law, to gain insights into the importance of trademark monitoring.
A monitoring service helps businesses identify potential conflicts at an early stage, allowing them to decide whether to take action. Acting too late can make enforcement more difficult and costly. However, monitoring provides more than just conflict detection, explains Ann-Charlotte Söderlund Björk:
- On one hand, you want to protect the integrity of your own trademark, and on the other, you want to stay informed about market developments that might affect your goods and services. Monitoring allows you to track emerging trends, identify new market entrants, and see what competitors are registering—providing valuable insights into their strategic direction.
A Strategic Tool
Trademark monitoring can also serve as a strategic tool for managing and strengthening your brand portfolio.
- If you notice a rising number of applications that closely resemble your trademark, it could indicate a need to reinforce your brand’s distinctiveness. This might involve registering additional variations, such as a word mark, a logo, or other adaptations of your trademark. Also, if your brand undergoes significant changes, remember to file a new application to maintain protection. Use requirements stipulate that a trademark must be used as registered, so significant alterations may require re-registration.
Should You Oppose a Trademark?
When considering an opposition against another trademark application, a commercial assessment is crucial, emphasizes Ann-Charlotte Söderlund Björk.
- Oppositions can be costly and sometimes risky, so they are not always justified. Ensure that your own trademark is not vulnerable to counterclaims due to non-use or weak distinctiveness. A thorough business evaluation is key—does the mark pose a real risk of confusion? Are you competing in the same market? In some cases, a coexistence agreement might be a better solution, but one must also be mindful of competition law to avoid legal pitfalls.
If a trademark application closely resembles your own and risks causing confusion, filing an opposition may be a wise move. For international trademark conflicts, consulting a local attorney in the relevant country is recommended to understand legal precedents and assess the risks and opportunities of opposition.
It is also beneficial to take a long-term perspective:
- Even if a new registration does not seem like a threat today, it could later be acquired by a major player—making enforcement much more difficult.
Additionally, opposition proceedings that successfully prevent registrations create a deterrent effect. Public records of rejected trademarks can signal to others that you are proactive in defending your brand.
The Importance of Proactive Monitoring
For legal representatives, monitoring services enable them to support clients with timely and informed recommendations based on weekly reports.
Many assume that authorities automatically reject conflicting trademarks, but this is not always the case. In Sweden, for example, examination includes an assessment of potential conflicts, but in many other jurisdictions, such checks are not conducted at the application stage.
PRV Consulting offers a range of trademark monitoring services. Learn more here: