Nowadays, it is very uncommon to have trademark infringement legal proceedings that do not dispute actions through electronic means as one of the infringing acts.
This is due to the following elements that are behind the actions of many companies operating on the market:
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- The company’s own website, which may provide descriptions, photographs, product references, etc.
- A third-party marketplace that sells the company’s products
- A domain name
- A mobile application
- Social media accounts
This myriad of tools aimed at marketing or providing goods and services makes it possible for trademark infringement to now occur in a range of media that is much wider than the narrow scope of the past.
The greatest problem that this presents for a registered trademark holder is that they will very rarely be able to prevent third parties from interfering in the exclusive sphere granted to them by their right via the unauthorised use of identical signs or the like in any of the aforementioned media.
In fact, similarity does not need to be exclusively visual or a word mark for the holder to be able to prevent another sign from being used. Instead, it can be merely phonetic (see the illustrative example of the Judgment of the General Court in case T-346/09, in which KAN-OPHTAL and BAÑOFTAL were they were deemed phonetically similar).
For the holder alone to have control over this, they would need to make a significant effort to monitor the Internet for possible acts of infringement, which would require them to continuously scan websites, marketplaces, social networks, mobile applications, etc. This investigative work is practically impossible without external support.
Measures for monitoring trademarks
Fortunately, technological development has not only been used to increase the number of media that allow trademark infractions to occur, but it has also given holders the tools necessary to defend themselves.
Thanks to the development of a powerful set of algorithms especially created for the purpose of defending oneself, it is possible to control how a trademark is used online. Advanced computer software tracks all corners of the Internet to determine whether any third party around the world is carrying out potentially infringing activity via any electronic media.
This type of software is the basis of what is commonly known as “online monitoring”. The monitoring service, which combines computing with human intervention, normally operates as follows:
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- the trademark(s) to be monitored is/are determined;
- the specific media to be monitored are established, making it possible to distinguish between subcategories (for example, in the category of marketplaces, monitor Aliexpress but not Amazon);
- the appropriate parameters are configured so that the results are in line with the aim of monitoring in the best way possible (for example, creating “whitelists” of authorised distributors, the media of which shall be eliminated from the monitoring reports); and
- finally, during the time that the monitoring service is active, the potentially infringing actions are gathered and submitted in a report for the review and assessment of the actions to be taken.
Post-monitoring actions
Monitoring is one of the essential elements for “cleaning” the Internet of infringing uses. The other element, which would be pointless without monitoring efforts, is defined by the legal actions that must follow these efforts in order to effectively end the infringement of the trademark rights belonging to the holder who is affected by said detected infringement.
The post-monitoring process consists of two basic steps, which can be followed by other steps, depending on how the events unfold. The two initial phases are:
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- a study of the background and the specific action that is considered to be infringing; and
- the preparation and dispatch of a letter of formal notice to the confirmed infringing party urging them to immediately cease said use.
It sometimes happens that the infringing party ignores the demands of the letter of formal notice or directly rejects them. In this case, it is necessary to go another step further.
On the one hand, depending on whether the circumstances of the infringement allow it, the infringing action can be removed by contacting the provider of the services through which the infringement is being committed. For example, a complaints procedure will be initiated against social networks and marketplaces that are being used as a channel for the infringing action of the third-party in question. For instance, in the event that the use of an infringing trademark is detected on Amazon, it will be possible to file a notice for the withdrawal of the product according to the company’s policy for reporting infringement (here).
On the other hand, if the out-of-court channels are proven inadequate to put an end to the infringement, resorting to trademark infringement legal proceedings will be the final solution. In this case, the aim will be to convince the Judge of the commission that the registered right is being infringed upon so that they may order the infringing party to cease said action and, if appropriate, pay for the damages caused. One example of this would be Judgment no. 387/2017 of the Provincial Court of Alicante, Section 8, which confirmed the sentence to stop the use of the sign “RAW” on Facebook and to pay the holder the benefits obtained by the infringing party as a result of the infringement.
Complementary measures: worldwide trademark application monitoring
A trademark is considered to be infringed upon when tangible unlawful use occurs. Nevertheless, there are times when it is possible to prevent an infringing use from taking place in the future even before it occurs thanks to certain indications that usually precede them.
One of the most obvious indications that a third party aims to carry out a commercial activity that may conflict with the rights of a trademark holder is when said third party applies for a trademark registration before an intellectual property office (SPTO in Spain, EUIPO in the European Union, USPTO in the USA, etc.) and this trademark may create conflict with an earlier trademark. The conflict usually occurs due to the identity or similarity between the signs and the identity or similarity in its scope of commercial application.
For the holder of the earlier trademark to be aware well in advance of these problematic applications, applications which potentially lead to an infringing use, international software for monitoring trademark applications can be implemented.
This type of software makes it possible to receive regular reports of applications filed by third parties before many national industrial property offices, which due to their similarity to the trademark to be protected are incompatible with it.
This early detection of the intent of third parties to exploit a trademark that violates the rights of the previous holder has the fundamental advantage that, when the previous owner has trademark rights in accordance with the legislation of the country in which the application in question has been detected (since the trademark is registered in that territory or it is a non-registered well-known trademark, for example), it will be possible to file an opposition so that the competent office will refuse said application.
Nevertheless, preventing conflicting signs from entering the registry of territories in which the previous holder has or may have a commercial interest in the future is not a merely formal action. Instead, it can be a decisive measure to prevent future infringements.
If the monitoring plan is not implemented and a problematic application is not detected, a third party can easily obtain a trademark registration title for that sign and subsequently use it on the market. In this situation, it may be much more difficult for the previous holder to demand that e-commerce services and social networks eliminate the infringing uses detected, since in the event of any complaint, the third party will simply provide the platform with a copy of the registration certificate and this platform will refrain from taking any actions to remove the infringing content.
As such, it is important for the holder of a registered trademark who has an interest in maintaining their exclusive right to consider implementing worldwide monitoring software that combines the monitoring of uses online with the monitoring of registered trademark applications.
Registered trademark monitoring services
The implementation of online monitoring services is essential for effectively detecting the unconsented uses of signs that infringe the trademark rights of the legitimate holder.
Moreover, software for detecting incompatible applications worldwide or in selected territories makes it possible to get ahead of infringements and act effectively at their origin before they occur.
ABG offers its clients monitoring services in collaboration with trusted providers with whom it has a long record of cooperation that makes it possible to obtain the most competitive prices. In addition, ABG directly provides expert advice, offering a service with a high added value to clients who are worried about the possible infringement of their trademarks online.
