• Oleksandr Bragarnyk

"Hit or Miss" Approach for Overseas Trademark Registration

Updated: Jun 4

In process of registration of the trademarks abroad, there is a question of the probability of refusal, refusal in certain countries, limiting the list of goods. Is there a way to prevent such problems or, at least, to minimize the probability of occurrence?


At first glance, the answer is obvious and straightforward - you need to go to the search engines, especially since they are free, and give users phenomenal search tool.


But if you try to figure out arrays where the search is made, which arrays are being processed and by what means?


Of course, an "analysis of the state of the art" was initially conducted on this issue, which revealed a very interesting publication - Battle of the free trade mark databases - Global Brand Database versus TMview ( Mark Schweizer, August 08, 2017 ) .


The author's conclusion is not ideal, but thank you too.


We wanted to go a little further, dig deeper, understand more.


First, collected and systematized data presented by open resources (Table 1). Collected data on the representation of countries in open search resources. It is evident that some countries are not represented at all.

Secondly, not only the lists of countries, but also the fullness were compared (Table 2). The data was filled up with resources. The red is more than 1% discrepancy.


Conducted a test benchmarking in the Global Brand Database and TMview with the following parameters:

Nice Class - 05, Country - USA, Status - Active

Result: (as of 30 January 2018)

Global Brand Database: 100686,

TMview: 87336


Conclusions:

1. The bigger the country, the more developed the economy, the higher the reliability of the search.

2. Even for developed economies, there is an urgent problem of data reliability (table). Different resource search engines issue different answers to identical queries.

3. Open sources - this is definitely positive, but it's not worth relying on them completely. The price of the error is a business reputation.

4. The correct strategy - the previous "rough" search is carried out before the more perfect "manual", "human processed". As a result, there is a significant saving on the cost of overcoming the omissions in the registration abroad.


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