Intellectual Property

Prying eyes -- a guide to trade mark watching

By Shannon Fati, Griffith Hack

Trade mark watching is a good way to put in place measures to identify threats to your client's brands, as well as sending a clear message to counterfeiters and competitors that the brand owner understands the value of their brand and will take measures to protect it. This article takes a look at the measures which should be undertaken by all brand owners to protect, and more pertinently, enforce their trade mark rights.

Key tips to be taken away

  • Attorneys should encourage their client's to be proactive, not reactive.
  • Have a global strategy in place -- places like China can be a minefield if you have not considered all possible avenues of attack eg, English v Chinese versions of a trade mark.
  • Clients should consider what they perceive to be the biggest threat, and set up a strategy around this.
  • Spreading yourself too thinly, or taking the cheapest option, is not necessarily the best approach.

Success breeds complacency, complacency breeds failure

While the understanding of the intellectual property landscape among the business sector in Australia is improving, many business owners and companies in Australia still do not know of, or see, the need and value in protecting their IP, and particularly their brand. Common questions heard from business owners are "Why do I need to register my trade mark?" or "I have my business name registered and I own a domain name doesn't this mean I own the name?!"

Of course, the answer to these questions at a basic level is that every business owner should have their trade marks registered to ensure they have recognised rights to use and enforce the trade mark. A trade mark registration is ultimately the best means of protection to prevent or remove for example counterfeits of branded products in the market. But what happens after a trade mark is registered? Often the trade mark owner goes into a "trade mark hiatus" and the enforcement and proactive preservation of these rights are forgotten or neglected.

With more counterfeiters attempting, in increasingly sophisticated ways, to get a slice of the success that comes from the investment that a company makes in a good brand, trade mark owners can no longer simply rest on their laurels. It is now often very difficult for consumers to tell the difference between genuine products and fakes. Not only can counterfeits be damaging to your client's brand and profits, they can also be dangerous.

Pfizer Australia reportedly made at least 6,000 seizures of counterfeit pharmaceutical drug "Viagra" alone between the years 2004-14. Laboratory testing of these fakes found a toxic array of ingredients, including paint, heavy metals, chalk, rat poison and anti-freeze. Thus, companies should be encouraged to be, and are ultimately responsible for being, proactive in the defence of their trade marks and brands.

This is why you will find that some of the world's biggest brands are also the most aggressive and some might say ruthless enforcers. But, to understand their enforcement strategy you need to ask, "What is in a brand?".

Prevention is better than a cure

Clients should not be complacent. There are many watching service options available to individuals and to companies (big and small) which can be utilised at an affordable price. The cost of not knowing of infringing behaviour at the earliest convenience is likely to end up being far more than the cost of the preventative measures outlined in this article. 

Putting measures in place such as trade mark watching services will enable brand owners to identify threats to their brands, and if necessary, provide the opportunity to take action against these threats. It also sends a message to competitors that the brand owner values its IP and is vigilant about protecting its brands. This may make potential infringers think twice.

Note: This is an extract from Australian Intellectual Property Law Bulletin, September 2015, Volume 28 No 7