This involves using the appropriate databases for continual verification of the publication of any trademarks registered by third party after the registration of the client’s mark. This practice allows one to identify any trademark applications by third parties for signs that are identical or confusingly to the client’s registration, and to determine the appropriate strategy moving forward, potentially through an opposition procedure or acting against the use of the applied-for mark in the relevant venues.
Databases are a critical tool in this area: they enable us to access ongoing surveillance services at extremely competitive costs, while our clients benefit from their services at no costs for new deposits and for the first year after registration. As, of course, there are no standard monitoring formulas, and the needs of each client need to be addressed on a case-by-case basis Jacobacci & Partners offers solutions that work because they are both personalized and cost-effective.
Through surveillance programs, the owner of a prior mark has the opportunity to become aware of the publication of all relevant applications for trademark registration, and thus is in a position to be proactive in preventing the introduction of similar or identical brands onto the market. This renders the client’s brand stronger and less easily copied. Moreover, when used effectively, surveillance can prevent the coexistence of similar brands that may give rise to the phenomenon of "brand dilution", which occurs, when the distinctive capacity of a brand is damaged because of the presence of similar brands on the market.
Not performing proper surveillance on the publication of similar trademarks means risking the indiscriminate copying of a client’s brand. Losing the opportunity to act quickly to oppose such actions causes significant losses for a brand owner, both in terms of a decrease in the value of the brand but also (and consequently) in pure commercial losses as customers are diverted to the goods and services of the competing brand.
