Performing trademark clearance searches without local experts can lead to problems

by | Jun 3, 2019 | Articles, Intellectual Property, Trademarks

Performing trademark clearance searches should always be the first step before filing a trademark application, as it is an effective measure to prevent legal risks before launching a brand.
A few years ago, these searches were solely performed by experts in Intellectual Property Law, but nowadays, there are lots of search tools that are exclusively using artificial intelligence (AI) to provide less costly and expedited search results.

Although AI is here to stay, why should companies still seek local advice?

While doing business in Brazil, local knowledge is key in many situations due to our legal system’s peculiarities. And this also applies to trademark clearance searches.

To better illustrate, a brand that in the same circumstances would have no problem issuing to registration in the US or throughout Europe, might be rejected in Brazil either because of our PTO’s contradictory decisions or based on absolute grounds. For example, if a phrase or expression makes sense in any language, there is a high chance our PTO will reject it as being descriptive or a mere slogan. Also, one of the reasons of our PTO’s contradictory decisions is that their level of tolerance with coexistence has double standards depending on the Class the application was filed on.

All these hindrances could be avoided by simple suggestions from an expert, such as: filing the mark together with a house-mark or combined with other distinctive elements, for instance.
In a connected world, companies are interested in having a unique identity globally and time is of the essence. So, we encourage using AI to perform searches, as it evidently reduces costs and provides speedy results. Nonetheless, in jurisdictions with its own idiosyncrasies, using AI engines should not rule out an expert analysis, as local know-how may completely change a search report and advice from the get-go.

Article published in MIP, read on here.

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