The battle of the brands

BATTLE OF THE BRANDS: TRADEMARK WATCH SERVICES & BRAND DILUTION

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According to Brand Master Academy, brand dilution occurs when a brand losses its value from overuse or over-extension. International trademark association refers to trademark dilution as the unauthorized use and application for a trademark that weakens the distinctive quality of the respective trademark and brand.?Dilution occurs in two forms; blurring and tarnishment.

Dilution occurs when the unique features and distinctiveness of a well-known trademark is impaired due to the creation of a new trademark by an unauthorized party. Tarnishment is when another unauthorized party uses a mark in an offensive way. In this situation, authorized party uses the brand name/ trademark in a way that is offensive to the core values of the authorized user. The European Union has also recognized a type of dilution termed “free-riding”.?Free riding occurs where an unauthorized party uses the good will in a mark or brand without the express permission of the owner.

The laws, cause of action and remedies for free riding, trademark dilution and tarnishment might be different in various countries, however in Nigeria, section 32 of the Trademarks Act, permits a proprietor to apply for defensive registration of its well known marks in order to prevent brand dilution. The purpose of registering a brand as a defensive trademark is to prevent unnecessary exploitation of the goodwill and value associated with the trademark by third parties in another class, who wish to profit from the good-will of the brand owner.

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Because trademarks are a very valuable tool for enterprises to build brand following, loyalty and trust in the market, counterfeits are regularly on the rise, seeking for indirect means to exploits excellent and well-known brands. To mitigate against this, individuals and companies with registered brands, must constantly watch for the risks of brand dilution, infringement, tarnishment and free-riding.

Regardless of how well your trademark or brand is doing today, getting required professional services for trademark watching is so important. Before now, the following trademarks were doing fantastically well, until they became household names and victims of generalization.

·??????Aspirin

·??????Heroin

·??????Escalator

·??????Kerosene

·??????Zip code

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?How to Conduct Trademark Watch Services

Executing a trademark watch strategy depends on the over-all commercial objective of the organization. Sometimes, IP Attorneys identify similar confusing new marks/devices that are visually, phonetically identical with one another. Again, a watching service can cover one country, two countries or even worldwide.

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a.?????The attorney must understand the over-all commercial and business objective of the organization

b.?????Attorney would take into account the size and reach of the brand’s owner’s portfolio.

c.??????Regular watching and monitoring of national and sub-regional trademark publications to spot any potential infringement, dilution, on already registered marks, devices and logos.

d.?????Watching services can cover logos, devices, plain words, styled words etc

e.?????Google search, Google Alerts, Google Key words are tools you can use to check for different aspects of your brand that needs watch and monitoring services. You can also use the Trademark Electronic Search System (TESS), the USPTO database of registered trademarks to search for marks that might cause a likelihood of confusion during the registration of your trademark.?

f.???????Trademark attorney or IP Consultant would set up multiple watching services and tools for the organization

g.??????Select the type of watching services that is most relevant to the business

h.?????Craft a good watch strategy for the organization.

5 Precautions trademark owners should take into consideration in order to prevent brand dilution and generic trademark names:

a.?????Execute rapid watch services, quickly stop counterfeited actions that seeks to dilute you brand assets such as logo, names, and other characters. ?IP Attorneys do this by issuing a demand/written notice to warn counterfeits from infringing on registered marks.

b.?????Encourage product diversification without pulling brand dilution. Register marks as defensive trademarks.

c.??????Carry out investigations, put an eye on the market at all times, and watch marks that seek to dilute your brand, and proactively take legal measures to protect your rights.

d.?????Always highlight attributes of the trademark to employees and customers, and encourage trademark watching across all divisions of the organization. Clearly display the sign of a registered trademark on the outer packaging of products and services.

e.?????Use trademarks in a consistent manner and develop guidelines for the use of trademark assets.

f.???????Most importantly, use highly distinctive words, characters, logos and visuals to design a trademark logo, this reduces the chances of it becoming generic. ?

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Ololade Oloniyo

IP & Entertainment Attorney?