MIKHAILYUK SOROKOLAT & PARTNERS

Patent and Trademark Attorneys

The Interview with Our Managing Partner Anna Mikhailyuk Is Now Live



September 2, 2020

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 August 16, 2020 a number of legislative acts regulating the IP sphere in Ukraine has 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. 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.