Trademark protection, preventing infringement and mitigating dispute risk

Trademark protection, preventing infringement and mitigating dispute risk

trademark protection

A brand is more than just a logo or a name; it represents values, quality, and a business’s identity. Therefore, safeguarding a trademark is an essential step to secure a brand’s integrity and reputation.

Numerous trademark infringement cases, such as Apple Inc. versus Prepear, Hermes versus Mason Rothschild, and the recent Jack Daniel’s versus VIP Product, provide valuable lessons for businesses regarding the importance of protecting their brands.

According to research, 47% of respondents, who are professionals in the field of trademarks, stated that their organizations spend up to $50,000 on trademark infringement litigation, with 40% spending between $50,000 and $249,999.

 Furthermore, the same research revealed that 46% of respondents said their organizations had to change their brand names as a result of infringement. Apart from the substantial costs involved in this process, such changes impact four crucial aspects: consumer confusion, revenue loss, brand reputation damage, and diminished customer trust.

Protecting brands from infringement risks 

Conducting a trademark investigation is a crucial step in anticipating these risks. These investigations aim to gather comprehensive information for trademark validation, ensuring its legal registration and use, thereby granting strong legal recognition.

Comprehensive investigations include determining if the proposed trademark infringes on existing trademarks, often referred to as non-use investigations. This proactive step helps prevent potential legal disputes that could result in losses.

For registered trademarks, investigations also play a role in brand management. For instance, they can be used to gather information and evidence related to alleged trademark infringement of registered trademarks. This information and evidence can then serve as the basis for legal proceedings in court.

Non-use investigation

In a non-use investigation, the process begins with an examination of relevant authority databases to identify which party registered a specific trademark. The investigation encompasses initial checks, registrant names, addresses, product classifications, logos, registration dates, and expiry dates.

Subsequently, to gather more information regarding products under registered trademarks, a covert investigation of the company or individual behind the trademark registration is carried out. This examination usually involves field surveys.

Field surveys are conducted to directly assess the brand’s status in the market. These surveys are typically carried out in major cities and focus on stores that sell similar and relevant products.

If no products with the registered trademark are found in the market, a statement will be prepared explaining the absence of such products. This statement will then be presented to the visited stores for signing and will be used as evidence in the trademark registration process. The results of field surveys and investigations will assist companies in managing assets, safeguarding intellectual property rights, and making decisions to manage risks during business expansion.

Trademark investigations should be carried out by all trademark owners, whether they are corporate or individuals.

If you or your organization require more detailed information about trademark investigations and other mitigation services, please do not hesitate to contact us.


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