Page 27 - IP-HANDBOOK-07-2018

Is the selected trademark available in the countries of interest ?
Understanding Search Opinion
The Group Legal & IP Department will provide you with an opinion about the search results and inform you about the risk categories of the searched trade- mark.
LOW RISK Permitted to use: No conflicting marks found; reduced risk that a third party may claim infringement of its rights; confident in chances of success to overcome obstacle if any.
MEDIUM RISK Management Approval Required: Potentially conflicting trademarks identified; me- dium business risk as a third party may challenge the use and registration of the trademark. Reasonable arguments to argue against trademark infringement. Use with approval of local management permitted, provided they are informed about the possible risk and willing to take it.
PRESENTLY UNAVAILABLE: Identical or highly similar marks owned by third parties; high risk of litigation with low chances of success. Necessary to take additional steps to clear mark before use can start. Or decide for an alternative trademark.
Search results are valid only for a short period of time. Upon receipt of search results don’t forget to inform the IP Department about your decision to file the trademark or to initiate the clearance.
1 2 3 4 Clearance
If the trademark searches reveal prior conflicting trademarks, some obstacles may still be possible to be removed.
By means of negotiation with the owner of the prior rights:
• Obtaining a formal consent.
• Entering into a co-existence agreement.
• Acquiring (full or partial) the prior rights through
an assignment.
• Obtaining a license.
By challenging validity of prior trademarks:
• In-use investigations may reveal that the trademarks have not been used for 3-5 years (depending on the country) and can be cancelled for non-use.
• Wait until the prior trademark expires. 27
By making modifications:
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Distinctiveness and Availability
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Modify intended use or scope of registration for goods or services to obtain further distance from the prior trademark.
Altering the sign to reduce similarity. Combining with another registered trademark (e.g. TEDDY vs. LINDT TEDDY).
For internal use only
HOW TO CREATE A TRADEMARK
Your IP Toolkit
• Checklist Trademarks