How to pass the trademark identity check?

Trademark (hereinafter - TM) is no longer a new concept in the modern world. Its registration, as a rule, has a positive impact on business development of the one who decided to carry out the procedure of registration of its own TM

The coincidence of one TM with another in all elements is called a trademark identity. In other words, identical trademarks are the same in all respects. 

What risks does a trademark identity entail?

The identity or similarity of a trademark, which we will talk about later, will almost definitely result in rejection of a trademark registration. And these are wasted hours and money for TM development and preparation of all documents.

Today we will tell you how to avoid possible losses and how to register your trademark in Ukraine without any problems.

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What is a trademark similarity and why is it bad?

As for the concept of the TM similarity, it is broader than the identity. There are the following types of the TM similarity: 

  • Similarity to the degree of confusion (that is, the symbols are so similar that it misleads the consumer, and despite some differences - resemble another TM). Such similarities most often prove to be the reason for refusal of a trademark registration by the authorized body, i.e. Ukrpatent;
  • Significant similarities;
  • Partial similarities.

Similarity is also divided into types by assessment criteria: 

  • sound (phonetic) criterion;

For example, the number of syllables and their location, the presence of close or matching sounds, the nature of matching signs, accent, etc. 

  • graphic (visual) criterion;

For example, font type, general visual impression, color or color combination, etc.  

  • sense bearing (semantic) criterion.

For example, the resemblance of the said concepts and designations or the exact opposite of such designations, etc. 

Please note! In order to recognize your chosen designation as similar to the degree of confusion, you do not need to have an identity or similarity on all three criteria. A single criterion will be a sufficient ground to deny you registration. 

There are preliminary verifications of TMs to ensure that you are not rejected during the registration process. 

Such verification is carried out not only in those classes, which the applicant specifies when registering the TM, but also in related classes, similar to those chosen by the applicant. For example, if you want to provide veterinary services, this is class 44, but you will need to check your TM not only in this class, but also in class 5, where there are pharmaceutical and veterinary products. 

How to pass the trademark verification for identity or similarity? 

There are several ways to do a trademark verification: 

Independent verification. 

This option is suitable for those who know the field or for those who are not afraid to spend a lot of time and to be denied registration. 

Of course, if registration is not a priority, or if you are confident in your abilities - this option is for you, but if you have not encountered this procedure before - the chances of success are very small.

Such a verification most often takes the form of a trademark search in different registries, such as the Registry of Marks Registered under National Procedure or the Database of Applications for Marks Registered under National Procedure.

Without knowing what exactly you are looking for and how to operate the information in the registries, as well as without having a clear understanding of what will be considered to be an identity or a similarity, it is extremely difficult to obtain an optimal result of the verification.

Verification by Ukrpatent. 

In this case, your designation/name will be checked only for identity or similarity. After the check, the applicant will receive a report with information that the authority has carried out the verification. 

But this report will not contain the conclusion whether it is possible to register this TM, as well as recommendations to improve the chances of such registration. 

Such conclusion and recommendations can be made by our lawyers. The highest probability of success will be ensured by the variant of organization of the trademark verification  at Ukrpatent by our specialists, followed by writing a legal opinion on the possibility of registration and optimization of the process.

Verification by a patent attorney. 

The key advantage of such verification is that the attorney will inform you about the real possibility to register the trademark. Such a verification is especially convenient and important in those cases when you want to get the .UA domani (national top-level domain for Ukraine). If you want to register such a domain, you will need to check all 45 classes, which requires a lot of time, perseverance, attention and skills. 

This is certainly a great option, but also the most expensive. 

Our lawyers can help you with the verification of the trademark in combination with the services of its further registration.

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Is it possible not to check the trademark for identity and similarity? 

Such verification is not a mandatory condition for TM registration, so it should be conducted at your own discretion. But in this case you risk the chances of a positive conclusion of Ukrpatent and successful registration of your trademark. Therefore, you risk not only the money invested in the development of the trademark, but also the fees that you will pay when submitting your application.  In case of refusal of registration, they are not refunded. 

If you want to do everything safely and to register your trademark on the first try for sure, don’t hesitate to call us. We will help you with both the preliminary verification and the registration of your trademark.

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Publication date: 05/08/2020

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