6 July 2012

Watch it!

I began what would turn out to be my career in the field of trade marks when I was a teenager. I'd like to claim this was only a few years ago, but my mother taught me never to lie.

One of my tasks in these early days was to reproduce the marks advertised for opposition purposes in the UK Trade Marks Journal into a more concise publication, the "Trade Mark Record". My employers had permission from the Crown to do this although I don't think Her Majesty would have been too impressed with the scissors and glue method to its production!

This was then sent out to a number of subscribers to flick through. For most it was to find marks they may wish to oppose although it did also go to, for example, a Trade Marks Registry in the Caribbean so they could keep themselves abreast of what the UK Trade Marks Registry was accepting at the time. It coincided with a huge effort to clear a backlog of UK applications, helped by the recent introduction of new legislation, that meant many Trade Mark Journals were double volumes.

If my memory serves me correctly, a yearly subscription was not expensive but it would have been roughly the same as a standard UK watch 
(with the usual commercial watch providers) at today's prices.

In those days, watching (in today's sense of the word) was not done with the same regularity. The UK still issued citations of prior rights and whilst the CTM was on the horizon, it was going to be a little while before in came into force and then the first CTM Bulletin was published. (However, it would be the CTM that would help consign the Trade Mark Record to the history books.)

Watching services did exist. The UK's most well known provider had existed since just after the Second World War driven by the Scotch Whisky Association's need to spot imitation marks around the globe, something that would have met with my late grandfather's approval (the Colman in my company's name). However, technology has moved on significantly not just from the 1940s but from the 1990s too and back then watching would have been a laborious (and thus expensive) task.

It still is to a certain extent. Languages are complex and understanding their subtleties is still something more suited to qualified human brains. It is arguably at its most notable with the Chinese languages. I previously worked next door to a watching team and watching, if you'll excuse the pun, a trade mark watcher at work really brought home their unusual skills.

I hope this trip down Memory Lane provides some entertainment to those with a sentiment for trade mark history, but I will try to bring us up-to-date and make some points of modern interest.

Watching is now dominated by a few global players that have built up the infrastructure and resources (and with this I also mean, as I grin slightly cynically, their sales and marketing teams) to offer these services in a consistent and relatively cost effective manner. As more Gazettes move to being published on-line, the increased automation of watching should help make it even more affordable.

However, what I have found is that large trade mark owners can find themselves watching too many trade marks. Aligning watching with renewal strategy can be overlooked particularly where the two fall to different responsible people or teams. Reviewing portfolios in their entirety and monitoring non-use dates is also something beyond the capacity of many departments. Personally, I would like to see watching companies work more closely with their clients to strip out the "deadwood" being watched. This may prove unlikely as it could result in a loss of revenue but I do not think they should underestimate the goodwill it could provide and what may come of that.

Large corporates have a lot of bargaining power, and you could say more so in the current economic climate, but I am not aware of any that have placed demands on their agent network with respect to trade mark watching. Requesting that agents watch trade marks (for free, we will come to this) could result in savings of not only money, but also time. A local specialist will ignore irrelevant watch notices that computers and trade mark watchers may not - the simple reason is they are more in tune with local practice and may also be better aligned with a client's strategies - so the client receives a lot less watch notices to review. It could not only save money on initial watching fees, but in the general management of watches (e.g. watch renewals and cancellations).

Could law firms organise this for free? This is debatable. The theory behind it is that they would receive any contentious work and the related $$$ (or €€€ or whatever) that even if they need to organise the watching externally they could absorb the costs. Offering for free and really doing it for free are two different things though. In Spain and other countries where publication happens before examination, complimentary internal watching services have been provided for a long time. Some Spanish firms still provide this whereas others - who I imagine question the value if they've filed a CTM and then cannot watch all national EU publications - no longer provide this service. Firms that do provide this service are often more expensive than those that do not. I'll allow you to draw your own conclusions. It might be something that you can live with.

This blog is merely food for thought. I am not supporting one way over others as different circumstances may prefer one over another. Is quality control and risk best managed internally or externally? Receiving watch notices, even irrelevant ones, helps you monitor industry trends and competition so if someone else does this how are you keeping informed? (Of course, applicant watches can be set up for specific competitors.)

This blog talks about watching in isolation - and only trade mark watching at that, no domain names, no company names, no internet, etc. In practice, how watching fits in with other parts of your practice will be very important. It may sit side-by-side with filings/prosecution and renewals but analytically speaking is the sister of trade mark searching.