But, even that protection doesn’t guarantee that another enterprise won’t open with the same name and confuse customers. Entrepreneurs should note that under certain circumstances, a business with the same name can exist. “If the business does not operate in the same trade channels or if the goods or services are completely different, it may be possible that the trademark can be used by two or more owners,” added NY- based Attorney Hilfer, “Also, if the mark is a weak mark, meaning it is primarily descriptive or the marketplace is flooded with similar marks, it may be more difficult to prevent others from using the same mark.” Business owners should also be careful about trademark maintenance. A trademark registration is good for ten years. The USPTO require that, between the fifth and sixth years, business owners submit additional evidence of continued use. Between the ninth and tenth year the business owner must file a declaration of use again and an application for renewal.
How TM infringement can happen
- Someone else labels their goods or services in the same manner as yours, such as with counterfeit goods.
- Someone may use a spelling variation of your mark for example PIZZA HUT® vs PISSA HUT in order to create confusion.
- Dilution – Where someone uses your mark which does not necessarily create confusion. The mark is used in order to trade on its reputation and thereby detracts from the original trademark. For example, where ROLLS ROYCE ® became synonymous with quality, someone may want to call their product ROLLS ROYCE AWNINGS.
- Someone may – without ill intent – use you mark in such a way that there is a danger of it becoming generic. For example: “Experts in hoovering carpets” as opposed to “Experts in vacuuming carpets, using only the best HOOVER vacuum cleaners”.
- A third party may have registered a domain name without having done a trademark search or with intent to take advantage of your trademark.The owner of a trademark should regularly scan published Trade Mark Journals or Gazettes and oppose applications that may infringe upon their marks. Not only do you need to consider the Journal of your country, but also publications for applications under the Madrid Protocol or an European Community trademark application –OHIM. Trademark Database Resources:
- Wipo :Madrid Protocol
- Thomas Net
- Thomson CompuMark: SAEGIS ™
- European Community Trademark – OHIM
- Countries Official IP websites- Canada, UK, SA, AU, NZ