Trademark Trolling and Ways to Defend It

Like patents, trademarks these days are also an incredible asset for companies and it should be protected round the clock and throughout the year. Not only from those who are violating your IPs but also from those, whose sole business is to troll trademarks for monetary gain. With this article, our main aim is to underline what trademark trolling is all about and how can we get rid of these trolls.

What is trademark trolling?

Trademark troll is a pejorative term for any entity that attempts to register a trademark without intending to use it and who then threatens to sue others who use that mark. Though it is illegal and such entities should be punished still the fact is that trademark trolls do exist and we should take every precautionary measure to keep them at bay.

Kinds of Patent Trolls

Patent trolls are generally classified into three different categories.

Opportunistic trademark trolls- These are those parties who do not actually use or intends to use the mark but decides to register a well-known mark protected by a third party in another country but not yet in the country of the Trademark Troll. By doing so, the troll waits until the original owner decides to use the mark in the country, and blocks this use on the basis of its “spurious” registration. Once the company is willing to introduce its mark in the specified country, the troll requests the trademark owner to pay some money in order to obtain a license to use the mark.

Trademark bullies- Unlike the previous one here big companies tries to threaten small companies as they are prone to succumb complicated litigation process. company with a well-known mark in one or more countries tries to extend its rights much more widely than its actual territorial and/or business scope, bringing actions against other companies using the same or similar marks in other countries and/or totally unrelated commercial sectors.

Suspect Trademark Users- Such kind of trademark trolling is found mainly in those jurisdictions wherein common-law is applicable. In these jurisdictions, trademarks are granted on the first-to-use basis and this environment is exploited by these companies. These companies or trademark trolls claim, without solid reasons, to have used a specific mark, and threatens or brings infringement actions or opposition against any company or individual using and/or registering that mark.

Ways to prevent patent trolling-Though illegal we should admit that trademark trolling do exists and thus every measure should be taken to ensure that your trademark is safe and secured. Below are some of the ways through which we can avoid trademark trolling.

  • Trademark should be filed as early as possible not only in the country where it is manufactured but also in those countries where you are willing to expand your products.
  • Do knockout and full trademark search before registering a mark
  • The territorial scope and business scopes of similar existing mark should be choked out
  • A round the clock trademark monitoring mechanism should be put in place

All we can say is that trademark trolling and trademark bullies do exist and every company should take precautionary measures to avoid such incidences.

 

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