Searches in the development, registration and usage of trademarks

Why do you need to make a search?

It is difficult to overestimate the importance of this procedure at each stage of brand implementation. Before developing a trademark, a search is conducted to understand whether it is worth using certain images, symbols, and words in the marking. In the case of finding similar marks for goods and services, it will be much easier for the author of the designation at the development stage to refine or rework the mark.

Before registration in Ukraine, a search should be conducted to assess the chances of registration of the designation to avoid preliminary refusal, saving time and money. This is especially true for international registration through the Madrid system because it is based on national registration and costs more. If the entrepreneur receives a refusal to register in Ukraine, international registration is also canceled.

When using trademarks after registration, you should not neglect to conduct a search. If a similar trademark is submitted for registration, the owner of the registered trademark can object to its registration, thus legally avoiding competition in the future.

It is also necessary to monitor and control the use of the trademark by others so that the designation does not become a common word for the relevant goods and services. In this case, the designation loses its legal protection.

For example, escalator is a common word used to refer to a moving stairway. In 1900, the word escalator was registered as a trademark, and already in 1950, this word was recognized by the court as commonly used. The court concluded that the public refers to all escalators with the word “escalator” and does not mention (the manufacturer).

To avoid the transformation of your brand into a generic designation, you should prevent the use of the trademark by others by timely filing objections with the Appeals Chamber of the National Intellectual Property Authority.

How is the search performed?

The search is conducted in order to check the designation for identity and similarity to the degree of confusion with registered or applied for registration trademarks. The similarity is assessed by the first visual perception; phonetically – how a verbal trademark sounds and is written; semantics – what it means; graphics – what the picture looks like, other visual elements that are part of the trademark.

The search procedure is not mandatory and can be carried out locally for a certain country, or comprehensively for several countries or regions, for example, for all EU countries. For the search, special databases of each individual country and international databases of trademarks, which can be open or with limited access, are used.

Conclusion

Trademark registration may be unsuccessful due to the presence of similar marks for goods and services. Conducting a search makes it possible to identify similar and identical trademarks, and to see possible risks in registration.

If the databases are closed, or only part of the trademarks are displayed in them, we recommend involving experts from other countries to conduct a comprehensive search and assess the risks of registration, because similarities are not always obvious.
It is necessary to form search requests correctly since it is not possible to immediately find identical trademarks in the database.

We always conduct a professional search for our clients to determine registrability, provide recommendations for changing or strengthening designations, and increase the chances of a positive outcome.