26 LAWYER MONTHLY NOVEMBER 2024 there is a very different commercial application. We then need to look beyond the scope of these broad registrations and assess any vulnerability to produce a risk profile. The collections of broad scope registrations that exist on the various trademark registers do add to the challenge of clearance searching. In your experience, what are the most effective strategies for policing and enforcing trademarks against counterfeiting, particularly in highrisk sectors like pharmaceuticals and electronics? The most effective policing and enforcement strategies in high-risk sectors require a multi-faceted approach. There must be a portfolio of robust and comprehensive trademark registrations to support the development of a standard How do you approach trademark clearance for clients, and what common pitfalls do you see that can jeopardise brand protection? We use an in-house searching platform to access global trademark databases. Understanding a client’s business objectives and priorities allows me to identify key countries of immediate interest and those that may develop over the next five or so years. I can then run a landscaping search to provide an overview of trademark availability in the relevant markets at the outset so that we avoid future issues as far as possible as the business grows. When a client has a number of possible trademark options, I conduct initial searches for each to identify any immediate conflict issues. This process often narrows down the options, enabling us to focus on the most favourable candidates. The aim is to select trademarks that are inherently registrable in the countries of interest and that present a low or acceptable degree of risk. Assessing the client’s risk profile is therefore crucial, as is exploring any mitigating factors for the potential risks identified. Common pitfalls include the tendency to choose descriptive trademarks or those with descriptive elements in relation to the client’s goods or services. This can result in the identification of multiple conflict risks and difficulties in protecting and enforcing these marks with certainty. I therefore guide clients to avoid obvious selections and instead choose marks that carry no inherent meaning when applied to their goods or services or marks that are newly coined. Challenges in finding an available trademark are often pronounced in crowded sectors such as software, electronics, and technology, where numerous broad scope registered trademark rights exist. For instance, a registration for "computer software" is extremely broad and may legally conflict with a chosen trademark even where The most effective policing and enforcement strategies in highrisk sectors require a multi-faceted approach.
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