Trademark exclusivity which is enabled by registration, is territorial. Thus companies need to apply to each country one by one within the scope of their market strategies in order to protect their trademarks.
Finding earlier registered trademarks before applying for a similar/identical one will save a lot money, effort and time for companies, thus searching and having information on earlier rights before filing an application (so called clearance reports) is critical for avoiding potential conflicts.
Ways to avoid potential conflicts
Using Official Web-Sites and the Challenges
In order to avoid any potential conflicts, searching the subject trademark through registered trademarks is critically important. Trademarks can be searched online through each countries Official Office website. However, some countries have official websites where only trademark regulations can be found but no further online search service is provided. (i.e Bolivia, Ecuador etc. )
Language barriers are another troublesome part of the clearance since some countries provide online search services only in their national languages. (i.e Indonesia, Brazil etc.)
Another challenge is inadequate information. As an example, some registries do not provide status information of trademarks, instead records cover only the basic information of the mark. This reachable information may not always be sufficient to evaluate the risk level. For example most of the official websites do not provide an opportunity to search confusingly similar words and/or devices. Also in some other offices, they cover only databases over recent years but there is lots of missing data.
Moreover, the database will not be reliable when the information is not updated. In this regard, it is not wrong to say that the registries have different speeds when it comes to updates.
Using Legal Technology Services for clearance reports
Today, there are various kinds of search opportunities for companies in order to help the naming process. TrademarkNow is one of them which provides a full trademark management platform including trademark clearance and watch services.
Compared to official website online search engines, TrademarkNow search tools, NameCheck and ExaMatch are far more user friendly with high quality search results.
Thus the critical question is which one to use? Official? Non official? Due to the challenges mentioned above, even in the countries which provide an online registry with search features, the easiest way is to conduct the clearance search though non-official systems like TrademarkNow.
To use one system for searching different territories provides the user with the ability to see the trademark evaluation in the same representation. At TrademarkNow, integration of different ways of representation of the information is consolidated by abolishing the differences between the offices. In this regard, for example, we are matching the different classification systems and a team is working behind the scenes to unify different terminologies. Moreover, TrademarkNow is working with many Vendors along with the Offices data, thus double checking the data and in some cases contacting the Offices and requesting fixes from them. Thus the errors/update problems are corrected to the max.
Last but not least, it is crucial for a company to have a risk evaluation within seconds which is enabled by theTrademarkNow web based platform.
In this regard, choosing the right technology is also an important task for risk management. After a decision to use non-official systems for clearance process, it is again crucial to choose the right technology for the needs. It is important to have a risk analysis through the search using unique trademark law modelling research that takes everything into consideration just like TrademarkNow. Also considering the fact that in many countries, it is not necessary to have registered a trademark to acquire rights to a name, the technology should provide industry results as well as internet results again as TrademarkNow does.
The information in the registry is not always reachable through online websites and differs country to country. Also the update speed of the information, representation of the data and even the content will differ country to country.
Within this picture, avoiding potential conflicts and understanding the exclusivity map of the earlier trademarks on territory bases will be easier through non-official legal technologies such as TrademarkNow. Moreover TrademarkNow provides not only registration risks between similar trademarks but also valuable information about use risks, ensuring a bigger picture for avoiding conflicts. In this regard, TrademarkNow is providing fast, efficient and effective trademark search process with no exceptions.