The cornerstone of a strong brand is the exclusive right to its name and/or logo. However, every day we encounter cases of companies having lost their sole right to their name, or failed to protect it on all their important markets. There are many reasons for this. The trademark may have been registered on a former employee, or a company moves and does not receive communications informing it that their 10-year ownership period of the trademark is expiring. In many cases the consequences can be devastating.
With a minimum amount of work, however, it is easy to prevent this – and without placing undue responsibility on your CMO, IT manager or legal department.
We take full legal responsibility for the entire trademark process; from consultation regarding what to protect and where, to classification, world-wide trademark applications as well as handling potential objections and/or injunctions. Furthermore, we also take responsibility for managing and monitoring your trademarks, make additional registrations and act on possible infringements.
Our management includes full legal responsibility for your trademarks, which benefits you in many ways: you obtain a complete overview, and don’t have to worry about which of your employees is responsible for these issues, or whether these issues are under control. In our unique web-based view, supported by a portfolio tools, you can see the status for your trademarks in the same view as your domain names and hosting services. This way you have full control over your trademark and domain name rights, which supports improved decision-making, safer handling and easier administration.
To us, a trademark portfolio is not passive – it is very much active. This is partly because the needs for protection often change, affecting which names or figures/logos should be protected, within which businesses and on which markets, and partly because a trademark portfolio is under constant threat, “legal”, (similar to identical or confusable trademark applications), as well as marketing-related (physical and digital trademark infringements). Since we work according to your policy and demands, we can act on all kinds of threats to your trademarks without your specific go-ahead, which makes handling very efficient.
In our active management, we take responsibility for the continuous protection, updating and monitoring of your trademarks. Our monitoring is primarily focused on identifying and objecting to applications for identical or similar/confusable trademarks applications, since legitimate applications tend to be a much greater threat than intentional infringements, which we naturally also act on.
Ports Group offers preliminary investigations that evaluate the prospects for protection of, for example, completely new trademarks, or enhanced protection of existing ones. We take into consideration what judgements the concerned authorities might make as to trademark applications, as well as potential objections from other rights holders. Based on our preliminary investigation we recommend how to proceed with the protection of trademarks on your markets of interest.
The Nice-classification comprises 34 trademark classes and 11 service classes. In what classes should you register your trademark? An optimal protection requires a rational balance: you need to register the trademark for all products and services it’s actually used for. On the other hand, if the trademark is registered for products/services it’s not used for, you risk losing the trademark in all classes.
In consultation with you, our legal experts work out a strategy for trademark protection, and then handle the whole process on your behalf, regardless of where a trademark is to be registered. When we create a trademark strategy, this often includes a strategy for the protection of domain names on relevant markets to also offer adequate trademark protection on the Internet.
The right to a trademark must be renewed every 10 years. The renewal can be made from a year before the expiry of the 10-year registration period. In most cases, it is also possible to renew a trademark up to six months after its expiration, (for a fee). Naturally, our management includes ensuring that no renewal is missed and no right is expired.
With Domain Name Watch, we search and identify domain name registrations encroaching on your trademarks, company names and product names. Searches are made on identical names, but also on so called typosquatting: similar spellings, misspellings and phonetic variations. We continuously search top domains and report domain names based on your chosen search terms. Our reports are submitted once a week or month according to your demands.
Web Content Watch searches for your trademark on the Internet. If your trademark occurs on websites, meta-tags or content on website, we report this to you. Monitoring includes social media such as Twitter, LinkedIn and Facebook, and we also monitor apps. Web Content Watch is not only a powerful tool for trademark protection, but also for your marketing department that can follow-up the effect of campaigns and the perception of your brand. WCW does not search auction sites – for this we have our specially designed Auction Watch tool.
Web Page Change Watch searches for changes on specific websites, for instance if you want to monitor a competitor’s sales page, or if you have found a website that might encroach on your trademarks. Who is Change Watch monitors altered registration data for given domain names so that you can survey if the domain name risks being used to infringe your trademarks.
Counterfeit products are estimated to amount to between five and seven per cent of world trade, or USD 600bn per year. Besides lost income and damage to brand value, the counterfeit trade causes severe problems from a CSR perspective, since manufacturing of counterfeit products often involves poor working conditions, child labour and environmental pollution.
TRACING – auction sites, web shops, websites, apps and social media sites to track down selling of counterfeit products and trademark infringements.
ANALYSIS – our system automatically filters large amounts of data and identifies potential improper use of your trademark. All suspect content is flagged and then analysed by our experts.
MEASURE – today we eliminate 95–100 per cent of all identified illegal selling thanks to our solid knowledge of how to fight illegal sales and counterfeit production. An important part of this is our experienced and multi-lingual employees, and our network of key personnel present on all global online marketplaces.