How Sagacious IP Enabled a UK-based Multinational Track Words and Designs Infringement Globally

Businesses around the world understand the importance of intellectual property (IP) and are always keen to safeguard it. Different types of IP, however, call for different types of IP protection. A registered trademark is one such IP right that helps companies distinguish their goods and services from those of other companies. However, prior to registering a trademark, it is advisable to conduct an exhaustive mark search to ensure that the trademark in question is not already in use by any other company. By conducting such searches, companies avoid words and designs infringement and gain powerful insights. The following article discusses how our team helped the client identify words and designs that could potentially infringe their proposed mark.

Brief Description of the Problem

Our client is a UK-based multi-national law firm with offices located in more than 40 countries throughout Africa, Europe, Asia Pacific, Latin America, Middle East, and North America. They have a worldwide network of providing legal solutions and advising government and other public sector bodies.

Recently, they leveraged Sagacious IP’s support to identify all search results which were relevant to their word and design search. They wanted us to perform an exhaustive search to identify all results which fell under the classes as well as goods & services provided by them. Nice Classification (NCL) organized the information associated with trademarks into numerous indexed classes, thereby simplifying our search process. Furthermore, they approached us for global trademark watch service which included the format, i.e. results from filing date, opposition date and registration date.

Solution Offered by Sagacious IP

Our team understood the criticality of the project and devised a search strategy for identifying the relevant results. Following the said strategy, our in-house trademark search and monitoring experts covered all relevant results related to the client’s goods & services. These mark searches included both multi-country and global searches. At the end of the project, the team delivered a comprehensive report wherein the results were categorized based on classes as well as goods and services. The report was also categorized into three sections – exact results (most relevant), near exact results (related), and other results that were relevant to the client’s searches and could possibly infringe their mark.

The Impact

Our exhaustive trademark search and monitoring report helped the client identify all trademarks that could potentially infringe their mark and make informed decisions regarding trademark registration. So far, Sagacious IP’s team has performed more than 35 trademark watch services including global, multi-country and country-specific watch services for the client and is looking forward to receiving more projects. The project spanned for almost a year with an average team size of three members. Based on our report, the client has filed more than 12 global and country-specific applications successfully (including word and design).

Final Thoughts

Today, more than ever before, companies rely on trademark search before launching products/services in new markets to avoid words and designs infringement or simply register a new mark to protect their brand. Regardless of the urgency for trademark registration, it is advisable to conduct an in-depth trademark search to prevent risk of words and designs infringement and save time as well as cost associated with the registration process. Sagacious IP’s Trademark Search and Monitoring Service is specially designed to offer insights needed before filing for trademarks as well as keeping an eye out for possible mark infringement both globally and within the regions they operate in. Click here to know more about this service.

-Sunit Kumar Tiwari (Trademark) and the Editorial Team

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