Intellectual Property: The Role of Watching Services

One of the main purposes of obtaining intellectual property rights is to establish a monopoly over a product or process (in the case of a patent or design registration) or the identity of a business (in the case of a trade mark). 

For certain sorts of businesses, the mere establishment of a monopoly is enough – if, for example, you operate an R&D facility or are a tech start-up with a five year plan to be bought out, you may have neither the resources nor the inclination to police and enforce the monopoly you have been granted by the state in the form of patent or trade mark rights.

However, if your model is to make and sell a particular market-leading product, or the value of your offering is linked to its brand, then enforcement will be of importance to you. The fact that your product is scarce because it can only be obtained through one producer – you! - due to its being protected by patents and or registered designs may be a justification for a premium price. 

Equally, a branded product may be able to command a higher price because consumers associate the brand with desirable qualities, be those qualities inherent in the product themselves (for example, Marmite has a specific taste) or values attached to the brand as a symbol of social or economic status (for example, a Gucci branded bag) or as shorthand for particular lifestyle values (Gwyneth Paltrow’s Goop brand).

Policing Intellectual Property

Policing intellectual property can be undertaken in a variety of different ways. The most common means of looking after trade marks is via a watching service. Indeed, a trade mark watching service is the most common form of watching service. A basic watching service allows for the monitoring of events which happen on national and regional trade mark registers in a selection of nominated jurisdictions, usually for a chosen word, phrase, or particular form of logo in certain stipulated categories of goods and services. 

We might receive results from the different registries on behalf of a client daily, and at the end of each week or month, we might analyse the selection produced for the client. We look to see if marks are being filed which are identical or similar to the client’s marks and make recommendations as to how the problems presented by these new applications ought to be dealt with.

Legal Protections and Challenges

Where a client holds one or more registered trade marks in a particular country (say the UK) or has unregistered trade marks which have been used to the extent that goodwill has accrued in them, the client may decide that they want to block the new application via the use of opposition proceedings. If the mark has already registered, they may seek to have it cancelled. In addition, the fact that a company is applying for a trade mark for a similar or identical sign will put the client on notice that an infringement may potentially be taking place. Many disputes of this nature are resolved by dialogue and result in the drafting and execution of a co-existence agreement, wherein terms are agreed between the parties as to the nature and extent of the use to which the applicant party may put its sign.

Where the client does not have trade marks in a particular jurisdiction, or type of product or service, the detection and reporting of activity may inspire further filings. Similar services can be operated for registered designs and patents. In the latter case, such a watching service is sometimes called a caveat. An added advantage of having a watching service for patents and designs is that it enables the reader to keep up with the state of the art in a field of technology or design.

Birkett Long’s Client Services

Many of Birkett Long’s clients have watching services in place. Many are general, but some relate to the monitoring of particular competitors. The service is offered as an annual subscription model and is a popular product. It helps clients detect problematic actors quickly, and quick subsequent action can be of benefit to both parties – for example, in the instance where a company is filing a trade mark in advance of adopting a new brand, a quick intervention by an established rights holder can make the process of pivoting to another brand less painful than in the instance where their use was established and entrenched