Conducting the Right Trademark Search

What is the best way to conduct a trademark search?

Trademark databases available on official websites of patent offices are the primary sources that users turn to when they need to conduct a search. The algorithm of such a search is quite primitive, and the results display either identical designations or contain the associated words in the search. To have a complete understanding, a potential applicant must check dozens of trademark variations. The number of unofficial search databases that use their own trademarks similarity algorithm is increasing. In order to obtain precise results, it is preferable to combine official and unofficial search resources.

Is it useful to look at live and dead trademarks? Why does this help?

Each company considers its trademark as their own brainchild, and to always be unique. Recently, quite a lot of trademarks have appeared on the market, and it is becoming more complex to come up with one that will not have obstacles for registration and implementation. Depending on legislation of some states, dead trademarks may remain an obstacle for registering new designations for 1-3 years.

On 16 August  2020, a number of legislative acts regulating the IP sphere in Ukraine have been amended. The term for reregistration of expired trademarks has been changed to two years from the expiration date. During this period only the previous right holder or the third party with the consent from the previous right holder can apply for a mark identical to the expired one. For comparison, in Kazakhstan this term comprises one year, meanwhile in Russia and Belarus it does not exist at all.

What is the best method for finding the appropriate international class?

In order to select the appropriate class, it is necessary to refer to the International Classification of Goods and Services. However, it does not contain an exact list of goods and services with respect to which trademark legal protection may be claimed. If there are no items of interest in the list, an applicant may independently adhere to the criteria specified in the General Remarks of the Nice Classification. Finished goods are primarily classified per their function or purpose, and services according to the line of business covered by the class heading.

How do you devise a sound search strategy?

The search strategy should be developed by considering the guidelines for establishing trademarks similarity. While searching a trademark word element, it should be taken into account whether this element is fancy or has its own semantics. Based on this evaluation, the necessary search algorithm is selected, and the process requires an analysis of the graphic and phonetic similarities of individual letters and sounds. Having examined search results, an applicant can introduce changes to the trademark image in order to significantly increase its chances of registration.

How does a lawyer assist in such searches?

Most difficulties arise at the stage of the search where similar trademarks may be an obstacle in registering a new designation. We at Mikhailyuk, Sorokolat and Partners have more than 28 years of experience in registering trademarks in the countries of the former Soviet Union, and our professional background helps applicants to easily overcome obstacles at every step of the prosecution process. Additionally, the online trademark search tool provided on our website is free of charge, and it can be used for risks minimization at the initial prosecution stage. It includes Russian, Ukrainian, Belarus, Lithuanian, Georgian, Uzbek and Kazakh trademark databases which are updated on a regular basis. Additionally, the At the filing stage we thoroughly analyze the lists of goods and services of discovered trademarks, as they also influence the decision related to the similarity of compared trademarks. Finally, professional assistance from our attorneys guarantees due protection of the owner’s rights. An identical or similar trademark found is not a death sentence.

MIKHAILYUK, SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

office@mspcorporate.com

1, Bannyi Lane

Embankment House

Ground Floor, Suite 7

Kharkov, 61003

Ukraine

Tel.: +38 (057) 717 74 72

13, Bolshaya Dekabrskaya Str.

Suite 7

Moscow, 123022

Russia

Tel.: +7 (499) 408 41 27

www.mspcorporate.com

Mikhailyuk, Sorokolat & Partners is a patent, trademark and design law firm partnership established in 1992 by Mr. Valentin Mikhailyuk. At present, our company is one of the largest in the countries of the former Soviet Union in the sphere of IP Law.

Our firm has been setting exceptional service standards since its very foundation. Step by step, a traditional approach to quality combined with an innovative view of business development has enabled us to achieve an international reputation. Being proficient, responsible and scrupulous in every aspect of the profession, our company has built a reliable business network with partners from all over the world, expanded the area of business activity to all countries of the former Soviet Union and opened offices in Ukraine, Russia, Kazakhstan, Georgia, Belarus, Moldova and Uzbekistan.

Mikhailyuk, Sorokolat & Partners is proud of being trusted by small and medium entities, as well as the largest multinational corporations in the world. Inventions with multibillion potential and housewife simple innovations are treated with equally high respect and responsibility. Our general approach is the foundation of our strategy and shapes the firm’s spirit, and is the driving force behind our success.

Ms Anna Mikhailyuk is a Ukrainian patent and trademark attorney.

Graduated in Transport Engineering, Intellectual Property Law and Civil Law, she has been the company`s managing partner and the head of the trademark department for more than 20 years.

Ms Anna Mikhailyuk specializes in trademark and design matters, and mainly deals with search and filing of national and international trademarks, legal proceedings and contracts in the field of IP matters, industrial property infringement litigation, and unfair competition matters. She speaks English, Russian and Ukrainian.

Ms Anna Mikhailyuk is an active participant and member of INTA, ECTA, AIPPI, APAA and many other international organizations. Her department provides a full range of high-quality legal services related to trademark registration, prosecution and litigation.

Outstanding management skills are one of the main professional characteristics that outline Ms. Mikhailyuk`s practice and set the vector for successful cooperation. The trademark department works cohesively, and its staff consists of only the most seasoned professionals. The experts in MSP`s trademark department have vast experience in the solution of issues related to refusal of trademark registration.

Ms Anna Mikhailyuk has been recognized as one of the leading IP practitioners by various international rankings, namely the Legal 500, Best Lawyers, Women in Business and many others.