As business and industry rapidly expand, so does the world’s need for trademark protection, a practice known as maintaining Intellectual Property Rights.
Our trademark investigative team is exceedingly proficient and knowledgeable in this unique niche of the investigation industry. We are equipped to handle all investigations into matters involving the counterfeiting of protected products and the unlawful use of trademark, copyrighted materials and other Intellectual Property Rights.
In addition to our own personnel and recourses, EPIS maintains associate numbers of the U.S. Custom Service experienced in the Office of Investigations and Commercial Operations. These individual specifically handle cases involving the illegal importation of goods protected under Intellectual Property Rights Laws.
The law considers a trademark to be a form of property. Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office (or “trademarks registry”) of a particular jurisdiction. In many jurisdictions, trademark rights can be established through either or both means. Certain jurisdictions generally do not recognize trademarks rights arising through use (e.g. China or European Union). In the United States the only way to qualify for a federally registered trademark is to first use the trademark in commerce. If trademark owners do not hold registrations for their marks in such jurisdictions, the extent to which they will be able to enforce their rights through trademark infringement proceedings will therefore be limited. In cases of dispute, this disparity of rights is often referred to as “first to file” as opposed to “first to use”. Other countries such as Germany offer a limited amount of common law rights for unregistered marks where to gain protection, the goods or services must occupy a highly significant position in the marketplace – where this could be 40% or more market share for sales in the particular class of goods or services.
A registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered. The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or “colorfully” similar to the “registered” products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. An example maybe a very large multinational brand such as “Sony” where a non-electronic product such as a pair of sunglasses might be assumed to have come from Sony Corporation of Japan despite not being a class of goods that Sony has rights in.
Once trademark rights are established in a particular jurisdiction, these rights are generally only enforceable in that jurisdiction, a quality which is sometimes known as territoriality. However, there is a range of international trademark laws and systems which facilitate the protection of trademarks in more than one jurisdiction.
To avoid conflicts with earlier trademark rights, it is highly recommended to conduct trademark searches before the trademarks office (or “trademarks registry”) of a particular jurisdiction-e.g. US Patent and Trademark Office. It may also be advisable to conduct a broader search as well, including databases that contain names of registered companies and also an Internet search to determine if the desired trademark is either already registered as a domain name or otherwise being used. The reason for this is because trademark offices typically only search issued trademarks and pending applications in order to determine whether a trademark should issue. For business reasons, however, an applicant may want to consider a different trademark even if it could be registered if the domain name is taken or other businesses are using the trademark as an unregistered name or slogan.
In the United States, obtaining a trademark search and relying upon the results is also very important because it can insulate the applicant from any future finding that you willfully infringed the trademark of another. Essentially, if you obtain a search and in good faith feel the use of a mark would not be infringing it will be virtually impossible for anyone to prove later that you purposefully engaged in infringing activities.
In Europe and if a community trademark has to be filed, searches have to be conducted with the OHIM (Community Trademark Office) and with the various national offices. An alternative solution is to conduct a trademark search within private databases.