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Trademark and Design Watch

Scheduled watches of trademark and design registers, with new hits compared against the last run and routed to a recommended action for you to decide on.

By
By Bart Lieben, Attorney-at-Law

What it does

We watch the registers for you. We look for new trademark and design filings that resemble your rights, show you what has changed since the last run, and suggest what to do about each hit. This is the engine behind our trademark watch and opposition service.

Nothing happens on autopilot. An attorney reviews the hits before they reach you, and the decision to oppose, investigate or let a case go is yours, based on the attorney's advice.

Functions

Watch set-up

For each mark or design we note what to watch: the sign, the classes, the territories and how close a match has to be to count. The set-up reflects where your business actually operates, not a default list of countries.

Scheduled register watches

Watches run on a schedule. We watch trademarks through TMview and designs through DesignView. Every run produces a list of newly published filings that meet the criteria. A trademark watch is the legal and practical background.

Comparison with the previous run

We compare new results with the last run, so you see what has appeared since and not the whole list again. Hits already assessed and dismissed don't come back as new.

Similarity assessment

Each hit is compared with your mark the same way as in a clearance: visual, phonetic and conceptual similarity, and how close the goods and services are. How similarity is judged in practice explains the criteria.

Playbook routing

Rule-based playbooks point each hit to the likely right action. A close match in your core class may produce a draft opposition for the attorney to review; a distant one may just be logged for information. The rules reflect what we've agreed with you and are applied the same way every time.

Client review and instructions

You review the hits in the client portal and tell us to oppose, investigate or dismiss. We record your instruction and the date.

Proceedings tracker

We track opposition, cancellation and revocation proceedings with their deadlines, and record coexistence agreements. The dates sit alongside your renewal deadlines, which we manage with our portfolio and deadline technology, and a person confirms every one. Whether to act at all is discussed in when to oppose a trademark.

Where a lawyer checks: we agree the watch scope with you before the first run; an attorney reads every hit that reaches the portal; every draft opposition is approved before filing; and a person confirms every computed deadline. The playbook proposes, the attorney decides.

In and out, in short: you give us your marks and designs with the agreed scope. Each run you get a short list of new filings, each with a similarity assessment, a proposed action and the date by which a decision is needed. Hits you've already dismissed don't show up again unless the filing changes, and every instruction you give is stored with the hit it concerns.

What you receive

Periodic watch reports, an alert when a hit needs a decision, and access to the hits in the portal. For each relevant hit you get a short assessment and a recommendation. If you tell us to oppose, you get the draft for approval and then the filing confirmation, with later deadlines in the docket.

A watch covers published filings. It doesn't see unpublished applications or unregistered use.

Where it is used

For registered marks and designs that matter to your business, starting soon after registration. We also use it before and during a dispute, to see whether the other party has filed elsewhere. Watching online use of a brand, such as domains, social media and marketplaces, is a separate service.

A matter from start to finish

A Bruges brewer registers an EU trade mark and asks for a watch on the EU register in its beverage classes. We agree the scope, and the first run sets the baseline. On a later run, a newly published application with a near-identical sound appears. The comparison with the previous run isolates it, the similarity assessment rates it high, and the playbook proposes a draft opposition. The attorney reviews the draft and the evidence of use of the brewer's mark. The brewer sees the hit in the portal and tells us to oppose. The opposition is filed within the period, the proceedings are tracked with their deadlines, and the outcome, here a negotiated withdrawal, is recorded.

In short

  • Scheduled watches: trademarks via TMview, designs via DesignView
  • Only new hits shown, compared with the previous run
  • Rule-based playbooks route each hit to an action
  • You review hits and instruct us in the client portal
  • Oppositions and cancellations tracked with deadlines

Let’s talk

Tell us what you’re working on. We’ll get the right person on it and reply within one business day. The first chat is free.

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