Page 26 - IP-HANDBOOK-07-2018

Is the selected trademark available in the countries of interest ?
Finding a trademark that is available is becoming increasingly difficult. The trademark registers are crowded. The increased globalization and economic development have contributed to a greater demand for trademark registrations. In addition, a wider range of companies, organizations, individuals and even countries are seeking trademark protection.
To find an available trademark it is crucial to allow enough time to clear the selected candidates. If
ASSESSING AVAILABILITY
1 2 3 4 Defining scope of use
To be able to assess if there are conflicting prior trademarks it needs to be defined how and where the trademark will be used:
• How does the trademark appear?
• Will it be used on a “stand-alone basis”?
• For what products will it be used?
• In what context will the trademark be used?
For example, on packaging,
prior conflicting trademarks are disclosed, the pro- blem may be solved, but it may be a time-consu- ming exercise.
It is strongly recommended to start the searching and clearance process well in advance of a product launch or the start of a campaign. If conflicting prior marks are discovered and cannot be removed in the clearing process, you risk losing the invest- ment already made in the new trademark.
Because trademark rights are territorial, the search needs to be conducted in every country where the trademark will be used.
POS, Internet, for branded items?
• What is the length of intended use?
Long term (e.g., new brand or franchise) or short term (e.g. 6 or less months for a promotion)
1 2 3 4 Searching
Before search costs are incurred a search of the mar- ketplace and the internet should be undertaken by the responsible brand manager. There may exist tra- demarks that are used without a registration. These pre-existing rights can be an obstacle to introducing our proposed trademark in the market place in some countries.
Subsequently, it is necessary to conduct searches in the trademark registries of the country or countries where the trademark will be used.
Local factors should also be taken into considera- tion. Does the trademark have a negative conno- tation in the local language? Does the translation or use in local script make the trademark not regis- trable?
Use the checklist to collect all data required for a trademark search.
For internal use only
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WARNING
Pursuing with a trademark that is not available bears consi- derable litigation risks for trademark infringement (inclu- ding preliminary injunctions) and the risk of losing the investment made:
• We may immediately be forced to withdraw the products from the market;
• We may be forced to destroy all products and related packaging and advertising material;
• We may be forced to pay damages and/ or give an account of pro ts;
• We incur litigation costs (court and attorneys’ fees);
• We may suffer reputational damages.