Surveillance, what's that?
Surveillance involves keeping an eye on third parties and ensuring that your brand or a related brand is not registered or used by a third party in your industry or a related industry.
What can we watch for?
In practice, the trademark registers on which new filings are published weekly are monitored. We are then alerted to any filing that is identical or close to the one being monitored. However, trademarks are not the only rights that can be monitored. It is also possible to monitor company names (new company names registered at the registry) as well as domain names.
Surveillance of company names
Each new company registered with the RCS can be notified to you if its corporate name (the official name registered at the Registry) is identical or sufficiently close to the watched trademark. However, there is currently no administrative action or simplified arbitration procedure in France to prevent a company name from being registered at the registry. Therefore, in the event of a dispute, the matter must be brought before the courts, which implies a cumbersome and costly procedure.
Domain name monitoring
Each domain name reserved by a third party can be notified to you if it is identical or sufficiently close to the watched trademark. For domain names, there are arbitration recovery procedures (UDRP, URS or SYRELLI) open to holders of prior trademarks. These procedures are fast and economical and make it possible, depending on the case, to obtain the cancellation or transfer of the disputed domain name to the holder.
It is finally possible to carry out a more global monitoring on the Internet (search engines, social networks, forums...). It makes it possible to know the uses made by third parties, which are not necessarily related to registered rights such as those previously listed. This type of monitoring can be used to check that no one is unduly appropriating your trademark, but also to measure its notoriety (how often is it mentioned on the Internet?), or to detect possible uses that could denigrate your trademark (who is badmouthing your trademark and in what terms). It is possible to find anti-competitive practices that damage your brand's reputation and act quickly to stop them.
Why watch his brand?
Monitoring allows for quick and cost-effective action to stop an illegal deposit or use, in order to stop the infringement. It also makes it possible to prevent more serious infringements and to keep an eye on competitors.
Speed and economy
Thanks to opposition procedures (for trademarks) or the recovery of domain names, it is now possible to settle disputes very quickly and cheaply before any real damage is caused. These procedures are initiated against payment of a fixed fee, and are subject to strict deadlines, making it possible to obtain a decision in just a few weeks. When these procedures do not exist (simple use without right, or registration of a company name), the sending of a formal notice may suffice to put an end to the infringement, which is sometimes committed in good faith, through simple ignorance. A reminder of the rights held may convince the adversary to change his name, to stop using the disputed term, etc.
Stop an ongoing breach or prevent a future breach
The use of a name close to yours in your business sector can in the long term have harmful effects in terms of business, notoriety, etc. That is why it is important to detect them as early as possible, ideally even before they occur. The effects to be feared are as follows:
Risk of confusion
It's the worst thing that can happen. Consumers confuse two brands to the point of believing that they are operated by one and the same entity. The consumer buys the goods or services of one or the other, even though they actually come from two very different companies.
This is a consequence of the risk of confusion. This misappropriation may or may not be intentional. In all cases, it leads customers to divert from one trademark to another, thinking they are buying the same products.
Unfair competition and free riding
These are voluntary acts whose purpose is to take over the commercial and communication efforts made by a competitor, in order to benefit from them "without losing money", and ultimately to regain its customers.
It is the reproduction or imitation of a trademark in such a way as to create a likelihood of confusion without the consumer's mind. Infringement exists only against an earlier trademark (you cannot infringe a domain name or company name).
Keeping an eye on your competitors
Monitoring also provides a long-term competitive study: what are your competitors filing, are they trying to get closer to your brand strategy? This can help you evolve your practices in real time. How does it work?
In practice, you are regularly informed of occurrences detected by your surveillance provider. Each piece of information must then be analysed to determine the interest and relevance of an action. Most of the time, this action begins with the sending of a formal notice in order to give a chance to an amicable settlement of the dispute, quickly and at minimal cost. If this formal notice is not followed up, or if the negotiations are not successful, other actions must then be considered: opposition, recovery of the domain name, legal action.
Since amicable settlement of the dispute is always preferable, it is advantageous to entrust its management and negotiations to a professional who, with the right legal arguments and experience, will optimize your chances of a successful outcome.
How to monitor, and how much does it cost?
For the monitoring of trademarks up to 3 classes, theINPI offers an annual subscription for 360€ per year (July 2016 rate). The INPI also offers an annual flat rate for identical monitoring of company names (€170 per year) and domain names (€750 per year). However, the weekly listings received are not accompanied by any legal advice on the real danger represented by the trademarks identified, nor on the potential actions to be taken, nor on the chances of success if you decide to take action.
For personalized advice, follow-up and simple, clear and effective recommendations, we strongly recommend that you call on the services of a Industrial Property AttorneyThe fees are similar to those of the INPI, with the addition of advice and legal security.