Relevancy Of Knock-Out Search In Trademark

23rd September, 2023 - 9:13 am Categories: Trademark 0 Comments

Introduction

Conducting a trademark search before registration helps in the elimination of conflicts and informs us whether our mark is set for registration or is it infringing upon any other’s mark. Usually, we can see after trademark application, trademark offices reject the marks that are similar either because of the word, design, sign, or symbol or it can be the services rendered. The endmost goal of a business is to attain a registered trademark which in turn helps in growing their brand image and popularity. This also indicates that their brand is legally protected and in case if they wish to sell their brand, the end buyers can securely buy it assuming the least of risks associated with it. As said earlier, it is more advisable to handle these tasks to trademark attorneys to reduce the further hindrances caused thereby.

One of the major faults of most businessmen is, that they invest in further steps before settling the base. Many use to spend their money on creating a website, marketing, and supplying cards to enrich their brand before getting registered. They suffer when their marks get abandoned or pending which leads to huge loss of money, which is the only reason one ought to pass this duty to the concerned ones who are well known in this field. Searching in the trademark database and cross-checking with similar ones is not that easy task as it is indeed a hectic task to filter the relevant marks from the list. If it is found that your mark is similar to any of the marks in the database you are supposed to find a new mark for your brand. Knowing this in advance can help you reduce the cost and work on creating a new one, but just imagine what if you are asked to change the mark when half of your brand promotion is been done? Would not it be disheartening when you invest enough amount of time and effort in it?

Trademark Conflicts Arise After Knock-Out Search

The conflict arises mainly when the marks become ‘confusingly similar’, which can be phonetically, verbally, structurally, or it can be any prefix or suffix that causes misunderstanding of brands. There can be certain brands that are not registered but they are already running with common law rights. In some cases, they can also oppose the marks similar to theirs, where a common law right gives the owner to trade his brand but is not legally protected i.e. registered. Common law trademarks are restricted to geographical areas, so a brand that is established in a place cannot be copied by the second party to start a new one but they can if they are established in a different location. The first step of searching for a trademark is to do a random Google search, where you can get the necessary information. If not, then go through the official website of trademark registration in India, then click on trademarks tab and the click on public search. Search can be done based on 3 criteria, which are word mark, Vienna code and phonetic. Conducting class search is also important to ensure whether the existed brand has similarity with that of ours. But, once you have done a thorough search and found that none of the marks prevailing are similar to yours, a further search could be done by trademark attorneys to make sure they did not match any of the existing or pending marks.

[Image Sources : Shutterstock]

Although the search is meant to avoid future infringements, it cannot be erased as everything doesn’t need to be available in the prescribed resources. Knock-out search can be done by both sole- proprietors and corporates, they only have to go through a thorough search if their marks match with others or not because this is the base on which application is treated. Knock-out search is also applicable to those who plan to file a patent and wish to save their cost on accessing other’s inventions to avoid repetition. If they find any of the inventions similar to theirs, they can innovate something different to stay odd from them. Patent search is done with the help of patent literature, commercial databases, and other possible references. A rough knock-out search can be done to avoid future costs in obtaining a patent without delays. To identify the patent infringement in advance, a patent search can decrease the cost of legal disputes that can arise in the future. This also helps in refining your idea wherein, while referring to a few, you not only get to see similar innovations but also the idea of innovation which adds to the existing solutions. Determination of patentability is also possible through patent search as it helps to identify the areas where modifications can be made. In patent search, the prime focus is on novelty aspects whereas in trademark search, marks are considered to determine which all are similar to each other.

CONCLUSION

Conducting knock-out search before the registration of marks or filing of patent is helpful to avoid future conflicts and costs and is also an alarm for infringement. Initial search can not only decrease the burden, but can also deliver new insights which helps to sharpen their innovative skills. One can do this search by their own or with the help of professionals who are good at searching and finding the best possible solutions for their clients.

Author: Maria Rose Jopaul, A Stundent at Lloyd Law College, Greater Noida, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

REFERENCES

https://www.linkedin.com/pulse/what-can-you-expect-learn-from-knock-out-patent-search-h-brock-kolls

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https://kr.law/news/article-detail/what-is-a-trademark-knockout-search