Global Trademark Search without Breaking the Bank – Webinar

Key Points Covered in this Webinar (How You Can Conduct One-Day Global Trademark Search without Breaking the Bank) Session:

  • Why Global TM Screening is important to go globally?
  • Time and Cost-effective way to check availability of Global TM Screening. What is the most important data for your trademark, if you think globally?
  • Why that data important for your trademark?

Hosted by:

  1. Prateek Mohunta, COO, Sagacious IP
  2. Gopal Singh Rawat, Sr. Manager – Trademark, Sagacious IP

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More details about this webinar:

Global Trademark Search is critical for launching infringement-free products/services in international markets. But not many organizations leverage this due to the huge costs and turnaround time involved. But what if there was a way to conduct global trademark search without breaking the bank, quickly and efficiently?

Webinat Transcript

Faiz Vahid: Thanks for joining in today. Hi everyone. Welcome to the webinar.

I’m joined today by Prateek and Gopal in this webinar. This is Faiz Vahid, Regional Head for Europe signing in from Munich to welcome you all to our webinar on the topic of How you can conduct One day global trademark search without breaking the bank. I hope everyone is able to hear me out and if you have any problems, please write in the chat window so we can know.

So without Much Ado, let me introduce our first speaker for  this session, Mr. Prateek Mohunta, COO of Sagacious, in the business for last 13 years, textile engineering  from IIT DELHI, Welcome to webinar Pratik, Thank you  for having me on Webinar, It’s  a pleasure, We have Gopal Singh Rajawat , Trademark Search Expert, accomplished trademark searcher himself 8 plus year of experiences .Welcome to the webinar Gopal.

Before we move on to the PPT part whatever have some slide . Let me ask Prateek about his remarks and why this is important to discuss in 2020.

Prateek: Right Faiz, So topic is important because values of global brands greatly impacted by the protection it has globally, Generally companies push it to their back of the mind, that may have been correct in past but it evolved dramatically in 3 years. New rules, new service have come up and that is the reason we need to discuss this. First we focus on global trademark search and in what ways it can be done cost effectively. I hope people learn from this great session.  

Faiz Vahid: Right. So again one question that comes. I noticed in your presentation that there is specific focus of trademark filing in India. Can you brief the listeners about it so they have a better context.

Prateek: Primary reason is India as a domicile trademark filing is in Top 5 but when  it comes to global filing we do not stand anywhere but it has evolved in past few years. There are new solution, new services new tools and we wanted to bring that in context to our Indian listeners, listeners from other part may not find interesting but as we move forwards, our discussions will be applicable globally.

Faiz Vahid: So moving on to the next part of session, let me just mention that listeners can drop their questions during this session via this Go to Webinar box in the right side. There is small announcement, It is for all the participants attending this webinar that there will be “One month free trademark Monitoring for one mark by Gopal”. To avail this offer, participants can drop a mail at webinar@sagaciousresearch.com. So, Prateek over to you.

Prateek: So this is quick overview of how filing is evolved in India over 4 years. The number of trademark files are more  than 3 Lac and India rank among top 5 filing nations but then you see in the contrast in India filing numbers and global filing numbers. If we have look at it globally we are at 5lac, U.S.A and China seem to have maximum number of trademarks. Where you compare this list of export volumes of Indian companies it been growing substantially in past 4 years and this depends on bad protection they are getting outside India that leading to dilution, that leading to loss in business, and in general the awareness of brands, and that we need to correct and focus on as we move forward.

global trademark search

A small snapshot of Indian companies filing globally like Patanjali, Haldiram, So there are companies that are filing in multiple countries outside India and they are doing it successfully and it can be done, and some companies are doing it successfully. Now we should move forward and address some challenges and think how we can overcome them.

As we move forward, I like to mention 3 main points. Global trademarks, doing it quickly, doing it cost effectively, so kept hay in mind as we move forward. Trademark divided in 3 parts, First is selection of brand, Second is registration, filing, prosecution part and third is controlling the misuse. So we will focus on each of those steps and what are the possibilities of overcoming them.

Selecting the Right Brand

 We have seen in our experience of 10 years, it is one of the major challenge, primarily because  there are multiple stakeholders, there are market teams legal teams, product and there are spread to different geographies, spread across reasons they have pressure of launching the product every team have here on set of KRA and  legal teams also involved in the decision making product and no thing substantial amount of time to make this decision. They end up taking a short sighted decision.

One example: product team come to trademark team they gave 10 names and select one which have possibility of registering trademark. Trademark team didn’t have much time and they did global trademark search in limited geographies and went back to the product team with the answer. The problem they faced was almost branding failure because those marks were available in other countries and They ended up having localized brand names. This is something that happen and one need to understand and keeping a long term vision is important and here are solutions that allow you to do that. In next slides we will talk about solutions that exist

So there are 2-3 things that are important in global trademark search because your markets are worldwide not only U.S.A, China, India. Do a quick search and ensure that you mark is available globally. With one of our clients we provide them multiple marks they want monitored or checked, we do mapping against their key geographies and provide them an output to which marks are available so they can take a decision around it that is something that we do, it is doable and should be used. Other solutions are screening solution, A.I solution that enable you to do search yourself and help you to make decision there and then.

These tools should be best used during initial searches. Once you have shortlisted marks and potential brands for product launches then the professional support can be asked for detailed global trademark search and at the same time you are able to make the best use of time available to you so the decision making process is fast so you can reply all teams in teams. There are multiple solutions that we will take in next.

Professional support can be sort from company like ours Trademark Search Company. There are some subscription based tools you can use to do these global trademark search, It is not necessary to involve a associate or involve a search firm there are possibilities that exist which you can use on your own so it’s important when the brand is selected and vision is long sighted and not just really for specific initial launches, I think we should move to the next slide.

So as I said earlier, see broad process, one is selection, second is registration, third is preventing misuse, focusing on registration of trademarks. There are multiple factors that are involve that act as a roadblocks including multiple geographies, there are multiple partners in multiple geographies with whom who have to collaborate and then register, it time consuming process, it is a big challenge  and I agree and I understand, At the same time ROI , you  get filing in multiple countries is another factor that push someone back from deciding whether to go forward or not.

 Any company deciding to go global, we have to understand technology has moved forward, in the past this used to be a challenge, multiple associates to get things done bit now these process have become so easy and efficient that it does not really take as much time as in the past. You get one stop solution to get things done and there are multiple such opinions available in the market if you go out look out for and evaluate and judge on the basis of your evaluation.

We will giving you possible example and at the latter stages, we will also be coming up with a comparison of different tools available, which one to choose and why to choose them? as there are one stop solution available for profiling across the world there are ROI calculators available that enable to calculate ROI moving Into specific countries and possible market sizing and you have compared Indian ,U.S.A,  Europe, Malaysia, China markets based on your requirements.

 If a properly researched mark is filed in IPO it will cost to 25000 INR from filing to registration, that is about 300-350 Dollars. Same solution in U.S.A will cost u about 700 Dollars, Same thing Europe, we are talking about 20-25 countries, that is 1500-1600 Dollars but you get 20 plus countries. Using all of this together there are ROI calculators which are available which help you and decide which market to choose and when to choose and how to choose?

For example: technology is evolved where we moved in a situation that these things doesn’t involve the efforts it used couple years back .Some solutions are there and its important  for companies  to use this solution because more is possible with the same amount of money you  use to spent. So let’s use that.

Global Monitoring

global trademark search

This is 3rd aspect of the entire trademark process which is one the mark is registered, how do we actually make use of it, global monitoring is a concept in itself, monitoring in multiple countries sounds very costly. It sounds very difficult to keep track of, talk to multiple associates and keep track of it. So even doing that sounds like such a big challenge. We have heard from our clients in past they have to wait for months to get the report of monitoring, some country in Europe, some specific country in Asia.

 Where they have faced challenges and do not go forward because of a cost associated with it or time with it. We have a chemical company based out of India they have portfolio of 2000 marks and they never thought of monitoring these marks and never really had a solution to monitor those marks that can be cost effective. Challenges like these exist but again idea here is that the technology  today allows you to achieve information and get information and the tools that are available in the market allow me to identify such possible conflicts and infringements.

 You get reports of any possible infringing marks being filed by any competitor, whether they are phonetically similar or language equivalence, they are reported to you. So these kind of technology exist. That solution we provide to client we monitor bout 2000 marks on annual basis, across multiple geographies we are trying to cover as many geographies as possible based on their budget. Provide them report as it happens on daily basis highlighting problems areas and helping them take those decisions in a way that which marks need to protected or which marks will be rejected during prosecution. Things are done cost effectively and time effectively.

 You can use these tools yourselves , there are technology  enabled tolls that provide you monitoring reports from 150 countries ,you  get that in your inbox , reports are customizable as you want, you want it everyday on  email, annual, monthly update or on dashboard . Have that change in mindset where we understand what is possible and what is not possible and how things have changed and tech has evolved  as we move forward we will see tools you can use yourselves or with any technical support. Over to you Faiz

Faiz Vahid: Thank Prateek thanks for this comprehensive presentation. Now request Gopal  to take us through second part of this presentation subsequent to that we will get into Q&A session. Over to you Gopal

Gopal: As shared by Prateek, Monitoring can also be done by tools. In this session we will be discussing some option.  Start with WIPO, once you arrive at this link, Click on advance search in left side put in your mark name field class then press enter, all related letters will be there.

global trademark search

This tool is called TMVIEW. Once you arrive click on advance search at bottom. Select field and office of interest, put trademark filed, put class, click on search patterns. All related results will be displayed . It is also possible in EUIPO. Click on E-search plus option,put in the mark name. Click on class section .click on search .

global trademark search

So our platform is A.I. based trademark search where you can get instant reports or order manual searches as well. Global trademark search and multi country searches for selected brands can be done and report delivered in 1-2 days.  Global or multi-country reporting can be ordered online as it happens reporting.  Search cost range from USD 49 to USD 499 depending upon coverage. Monitoring cost range from USD 29 to USD 299 yearly depending upon coverage. 

Q&A Session

Faiz Vahid: Thanks for the quick DIY tools. Let me ask you some questions so that we can understand this is more details. So Gopal, this particular tool you mentioned , I am  sure there are several other tool available out there which allow you to do search , what tool do you recommend and how can someone decide among so many tools out there.

Gopal: So these tools have there own advantages, WIPO  tolls cover 120 plus countries , TMVIEW cover 70 countries but have more user-friendly interface. So if you are looking globally don’t look beyond WIPO and TMVIEW, If target is European country go with EUIPO

Faiz Vahid: You also mentioned platforms providing A.I based search and We know that A.I is coming in big way in IP domain, WIPO also launched there A.I  based global trademark search tool. What do you think AI is effective, is it reliable?

Gopal:  It has come leaps and bounds over the last few years. AI based searches are accurate especially tool we have selected to use on our platform is developed using 1000 examination and it improving and we have tested on 1000 live searches not had single issue.

Faiz Vahid: What about accuracy? , Are they accurate?, Is manual assistance required?

Gopal: As I told you, we have tested on 1000 live searches not had single issue. So accuracy is 99.9 percent

Faiz Vahid: That pretty fascinating because we don’t see such results in other search but in trademark, It has already made way and global trademark search is done pretty well using A.I tools.  Prateek, You talked about filing marks in different geographies  and challenges faced in those geographies. Ques from one of our participants what is good way to deciding when to and where to file marks .Question is coming from one of our participants. It would be good if you explain it with one of the examples.

Prateek: I agree  with this and it’s common, Thank you for mentioning. I would like to highlight my experience. This is U.S based multinational company  in the field of HVAC  and also does a lot of B2C work where they provide A.C  to consumers directly. This company launched a brand which one was at that time was specific only to U.S and China and it was pretty successful launch after couple of years they wanted to move into other countries, India being one of them that’s how we got working with them.

 They send us the trademark search for that product in India and other countries what we found was not pleasant as marks of that kind were present in those areas. To put it bluntly it was branding disaster from them they couldn’t do anything about them they had to localize the name, then launch the product. They did learned the hard way, for every new launches that they do, they have  50-60 brand names shortlisted with which they want to move forward we come with there product team, legal team based on their past , filing history we shortlisted 10-12 jurisdiction that are most important to them and what we do in the initial set of 10-20 brand names  they give , we do a quick a quick mapping of those brand names against these geographies  and get back with quick report of what is available and what is not available and send them. They have developed a tool which enables them to decide which marks seems to be the most easily available in key geographies and which marks they want to move forward with .That’s what they do,  that help them.  We have worked with them and done this successfully.

My suggestion would be when you start selecting a brand, you need to look at global perspective, geographies can be based on product history product launches and also based on their competitor, which market their competitors target but there can be other factors that can be used and that can be very specific but overall your historical market and your competitor movement, these two stand out .

In terms of WHEN , that is a specific decision whenever you want to launch. At the same time the initial decision making process of doing that particular geographies  would help in selecting good brand name. I hope I was able to answer the question.

Faiz Vahid:I think so but I am getting more questions . the question about how do you analyze the competitors?

Prateek:  This was as an HVAC  company so we looked at major competitors and there filing trends in 4-5 years which market they are trying to target , we analyze that and we came up with 20 odd countries which we discussed with their Product Manager and Layered this list down to 12 . This can be done, it has to be customized because different companies select different geographies , It can be done and It has to be done pro-actively it can’t be done reactively.

Faiz: So what you are saying is that there are couple of standard points and this strategy will also be determined by how the company operates depending on what is relevant for them or not.

Prateek: Right .

Faiz: Questions I got during the session, why should you chose pros service, as tools are helping so how can professional  service add value?

Prateek: Let me give you an example,  I agree If you are looking at just 1-2 mark in a year and volumes is less I would suggest do it yourself with tools that will be helpful. But when you are talking about bigger products then we are talking about monitoring , monitoring misuse of marks. that where professional help is needed. I think Gopal mentioned In one of his slide that here are tools available they’re subscription base tools you can take access to them anyone can make access to them and know these searches that’s also something that can be used but I don’t think they are very cost effective and so that’s where professional service is relevent, been doing it for more than decade, we know how clause, phonetics work, we have developed algorithm, the tools.

 We have 10000 examination and algorithm is based on that because trademark is subjective because we recently had a case where marks were similar , classes were different one was related to restaurant other was related to beverage, there was a conflict , so all of have to be faced with professional help and that where professional service come in with expertise. You can do it yourself, that is also advisable if you only 2-3 things to take care of as it also need bandwidth and time other option is you pay for access  to subscription based search but again if you’re looking at not too many searches are not too many monitoring’s not very good suggestion in terms of return on investment but if we are talking about volume like a chemical company I talked about having 200 marks, You need a couple of people to look at the marks that have been return, then to selection, then for advisory on which one to use that’s where professional services are needed to increase you efficiency.

Faiz: When we do these global trademark search what is output/input you get, what are contents of report. What is mentioned in the report, does it include federal, states thoroughly, may be Gopal can take this

Gopal: So in term of report content, it can be customized to include anything that customer want, the report would include all the basic information needed to make the decision. Mark name , mark logo ,owner, relevent date, In terms of coverage, we can cover us federal and states, we can also cover domain names which have specific U.S based TLS, we can cover common laws, yellow pages, e-commerce websites if applicable, social media reports if applicable. Format can be customized according to customer.

Faiz: You mentioned language equivalence in searching? How is it covered? The tools are intelligent? or manual intervention.

Gopal: TM filed annually globally end up taking specific meaning in global language sand might have some thing in English, we also cover Spanish, Spanish is again something very specific. What they do is for example in US when we searched around “wolf” we also searched for “lobo”, which language equivalent of “wolf” in Spanish. And in terms of what does the tools is capable of doing it? Yes, they are, we are talking about languages that follow the roman script bit when it comes down to chines and Arabic characters, manual intervention is needed. So in those geographies, manual intervention is brought in.

Can you do it yourself/ when you do quick decision then do it yourself , for quick screening of  a mark and removing /rejecting anything but for more detailed , we recommend paid tools or professional search firm.

Faiz Vahid: Prateek, You spoke about monitoring large sets of trademarks for chemical business in India but when we talk about Start-ups and Small business, they have very few marks, is that relevent for them ,do you have any examples in your customer portfolio smaller business using such services.

Prateek: Yes, Especially Start-ups are no longer sort of geography  specific , start-ups are coming up which gave multiple countries they are looking at  . Especially for Start-up the brand value exist because of that name and having that protected is very important and awareness is needed and we think it very important to have that awareness about trademarks. It build brand value a lot. When you your entire business is based on your name , it gets more important.

A friend of mine moved into his father’s business he is in the process of making alcohol swabs which is actually very really very common right now and I am sure in other parts of the world as well,  he is facing major problem with the trademark it is based on word which is very common and finding it impossible to get it register. Company has been using the marks for 20 years, brand name is not really a trademark, now he is in position where he have to change the mark. So it is a issue every start-up faces.

Faiz Vahid: We have not been able to cover all the questions that we received from the audience. So regret that and but however those which we have not been able to cover will be answered in the right step. We will publish post this webinar or will also reconnect with them specifically and have those questions answered.

I would like to extend a big thanks to all our listeners who helped us start on time and finish as well. So we highly appreciate that and thank you very much. Please join us in our next webinar and have a great day. Thanks a lot. Bye.

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