Ukraine Trademarks | Searches

Trademark Search is a search and the analytical work carried out by a specialist in the field of intellectual property in order to identify information about the trademark(s) that meet the criteria , set before starting the search, and achieving the search goal.

The searcher can be:

• Patent attorney specializing in "trademarks (marks for goods and services)";
• Another specialist in the field of intellectual property, specializing in the search for trademarks;
• Expert of the national body in the field of intellectual property;
• Several specialists step by step (for example, one specialist defines the search criteria, the second one directly conducts the search, the third one analyzes the search results, interprets them and prepares a conclusion).

The search is carried out using databases (for example, databases of national patent offices and international organizations), as well as other sources (search engines). The choice of certain databases and sources depends on the purpose and depth of the search, as well as the defined criteria.

Examples of databases that can be used to search for Ukrainian trademarks:

• Database of trademarks registered in Ukraine;
• Base of accepted applications for signs for goods and services;
• Database of international registrations extending to Ukraine;

TM search can be carried out to achieve a wide variety of goals. Below are some of them:

2. Tasks solved using trademark searches

Search for the purpose of submitting an application for trademark registration

This type of search is necessary for:

Search for the purpose of preventing a possible violation of the rights of third parties to their registered trademark

This type of search can, for example, be carried out:

Searching for registered trademarks for marketing decisions

It may be necessary to find out which names and images are registered for goods and services of interest to the customer. For example, this type of search can be used to make marketing decisions — to assess the prospects for the development of an existing trademark or the need to develop a new one in the event of the possible presence of similar registered TMs. In particular, this may concern bulky trademarks — bottles, packaging, labels registered as trademarks.

Search for the purpose of registering a .UA domain

To register second-level domain names in the .UA domain, you must present a copy of the trademark certificate to the domain name registrar. A search is necessary to find out under which classes of goods and/or services the name you are interested in can be registered.

In addition, it may be necessary to find out with the help of a search who is the owner of a specific trademark and, accordingly, of the domain you are interested in, for example, in order to purchase this domain from him.

Search to identify possible violations of your rights through fraudulent registration of trademarks by third parties

3. How to search for trademarks

Each of the above-listed types of trademark search has its own algorithm. As an example, let's take a search that aims to identify identical and similar trademarks that may prevent registration.

In order to obtain relevant data, the patent attorney establishes restrictive search criteria that will allow to single out from the multitude of trademarks registered in the world only those that may pose a potential threat to registration, the degree of which is determined at a later stage of the analysis of the search results.

Criteria that influence the setting of the search task:

As a result of conducting a search for the purpose of TM registration, the Customer usually receives a list of registered or submitted trademarks that are similar to his trademark. Next, it is necessary to determine whether there are trademarks in this list that are similar to the degree of confusion with the customer's trademark. A patent attorney performs this work based on the criteria described below.

Why analysis and interpretation of search results are needed (written opinion of a patent attorney)

Usually, research data in any field require analysis and interpretation with the involvement of a relevant specialist.

For example, the data of a medical ultrasound or X-ray examination require the opinion of a relevant doctor, the data of an oil well log must be interpreted by a geophysical engineer. And trademark search data is interpreted by a patent attorney specializing in "trademarks (marks for goods and services)".

A patent attorney evaluates the results of a trademark search based on the purpose of the search and the search task. Based on the results of the analysis, he draws up a written conclusion and provides recommendations. The evaluation algorithm and the type of recommendations depend on the type of search. As an example, let's take the analysis of search results, which aims to identify identical and similar trademarks, which can prevent registration.

Having received a list of similar trademarks as a result of the search, the Patent Attorney determines the degree of similarity between them and the customer's trademark and, accordingly, the risks of opposition by examination. To determine the degree of similarity of trademarks, the Patent Attorney applies several criteria.

Trademark search results are analyzed and interpreted by a patent attorney for the purpose of determining (i) the degree of similarity of the trademarks found with the trademark to be filed, (ii) the likelihood of their use by an Ukrpatent's examiner as an obstacle to registration, (iii) as well as assessing the chances of defending the registration in case of an Office Action.

You may choose whether to order the analysis of search results and written opinion (these are optional), however we recommended these an intellectual property specialist (patent attorney) possesses knowledge that allows him to accurately assess the degree of similarity of trademarks, in particular by using the following criteria:

The most important criteria for determining the similarity of trademarks are:

• identification of identical and similar trademarks that may be an obstacle to state registration — in order to develop the correct strategy for successful trademark registration;
• in case of detection of TMs that prevent registration — adjustment of the TM registration strategy in the direction of reducing the planned scope of legal protection, for example, by changing the type of TM (combined TM instead of verbal TM), indicating colors, adding or removing elements — for further successful registration registration;
• in the absence of TMs that prevent registration — adjustment of the TM registration strategy towards the maximum required amount of legal protection, for example, by changing the type of TM (verbal TM instead of combined TM), not specifying colors, etc.;
• minimizing the risk of opposing another TM and preliminary rejection at the examination stage and, accordingly, avoiding additional costs associated with defending TM registration.
  • when choosing the name of a new enterprise to be registered — in order to avoid claims from the owner of a registered trademark regarding the goods and services that the enterprise plans to engage in;
  • when entering a foreign market — to find out whether claims will arise from possible owners of the same or a similar degree of confusion trademark in the relevant country.
  • search for the purpose of identifying the use of your commercial name by third parties during trademark registration;
  • search for trademarks that are identical or similar in degree of confusion to your trademark, but registered in other classes (if your mark is well-known);
  • detection of facts of use during trademark registration of copyright objects belonging to the customer (for example, images, logos);
  • identifying trademarks that are registered to imitate your trademark or elements of your trademark.
  • Country in which registration is planned — this factor affects the choice of sources (databases) containing information about trademarks and specialists who will conduct the search;
  • Image and appearance of the trademark - mostly the search is carried out to identify trademarks that are similar:
    • with the verbal part of the corresponding trademark (for verbal and combined TMs submitted for registration);
    • with the figurative part of the corresponding trademark (for figurative or combined TMs submitted for registration);
    • both with verbal and figurative parts of the corresponding trademark (for combined TMs submitted for registration).
  • The patent attorney makes a decision on the type of search, based on the type of trademark that is planned to be submitted for registration (verbal, figurative or combined), as well as the customer's budget, since conducting two types of search at the same time (for both verbal and figurative parts) costs more;
  • Classes of goods and/or services according to the International Classification — the patent attorney chooses classes that contain goods and/or services for which the trademark is planned to be registered, as well as classes that contain homogeneous goods and /or services;
  • Urgency — when planning a TM search, the patent attorney takes into account how urgently the customer needs to get the data. This factor can affect the choice of databases (open or closed) and the depth of the search;
  • Budget of the customer — when formulating the TM search task, the patent attorney takes into account the customer's budget allocated for the registration process, since the list of selected sources of information (databases), the type of search (by verbal or visual TMs), the list of classes of goods and/or services and the term of execution directly affect the cost of TM search;
  • Search depth — based on the Customer's budget, as well as urgency and expediency in view of specific circumstances, the Patent Attorney makes a decision regarding the depth of the TM search — identifying (a) only identical trademarks, (b) ) identical and very similar trademarks, (c) identical and the maximum list of similar trademarks.

  Based on the search results, the patent attorney provides a written conclusion and proposes the most appropriate TM registration strategy.

  As a result of the analysis of TM search results, the Patent Attorney can come to the following conclusions:

  The patent attorney provides the specified conclusions in writing. In the case of identifying risks for registration, the patent attorney provides recommendations on how to reduce or eliminate the risks, for example, by: (a) changing the type of trademark submitted for registration (combined instead of word), or making changes to the image of the trademark, thereby reducing the degree of similarity of the trademark with the detected ones (so that it is not similar to the degree of confusion), or (b) making changes to the list of goods and/or services for which the trademark will be registered (which are included in the TM registration application).

  Looking for professional assistance of Ukrainian Trademark Attorneys?

  Send a Request for Free Quote.

  • •  
    • Visual similarity — the appearance of trademarks is compared;
    •  
    • Phonetic similarity — the pronunciation (sound) of trademarks is compared;
    •  
    • Semantic similarity — the semantic meaning of trademarks is compared;
    •  
    • Uniformity of goods and/or services — it is inserted, in relation to which goods and/or services the detected trademarks are registered or applied for registration, and whether they are the same or homogeneous with the goods and services in respect of which registration of the Customer's trademark is planned.
    1. On the absence of registered or submitted trademarks that are similar to the degree of confusion with the customer's trademark, and, accordingly, on the absence of risks of opposition of similar trademarks by examination;
    2. About the presence of similar trademarks that can be opposed by examination, with an assessment of the degree of risk of opposition (significant, medium, insignificant), as well as with an assessment of the probability of defending registration, if the opposition does take place.