Paperz IP might be a French company, but our documentary research extends far beyond our borders. Indeed, in addition to our archives, which come from a variety of origins, we have access to numerous international sources. These enable us to respond to requests that may cover a very wide geographical area, depending on the type of research involved.
A necessary distinction between design research and trademark research
At Paperz IP, we carry out research relating to designs (prior art searches, current market situation, identification of designers, etc.) and trademarks (evidence of use, reputation, acquisition of distinctive character, etc.). These two segments do not cover the same geographical areas, as explained below.
The territorial scope of design protection
Double protection is possible
Design protection under design law is territorial, meaning that the product will be protected within the territory of the industrial property office (IP) with which the registration was filed. For example, a design registered with the INPI (Institut National de la Propriété Industrielle) will be protected within French territory; a design registered with the EUIPO (European Union Intellectual Property Office) will be protected within the European Union. One might therefore consider that it is sufficient to conduct searches only within the territory covered by the registration. However, this would overlook the fact that a design may also be protected by copyright, which knows no geographical boundaries.
Indeed, copyright arises as soon as the work is created, provided that it is a work of the mind, has a form and is original. These conditions are met by many designs, which fall within the category of applied arts and therefore do not need to be registered with an IP office. This right confers on the creator an inalienable right, regardless of the territory.
International documentary research
At Paperz IP, when conducting a prior art search for a design, we consult not only the entries filed in the relevant IP registers but also, and crucially, other sources from all countries. These sources enable us to identify any designs that fall under copyright law rather than design law.
Depending on the client’s objectives and the research strategy developed by our researchers, these design-focused investigations can take us to unexpected and faraway places such as Korea, Japan or even Egypt…
As such, design research at Paperz IP involves access to over 70 IP registers and a wide range of international sources: press publications from numerous countries (both general and specialist press) and websites from around the world, accessed in particular via VPNs, as well as social media. We also draw on these types of sources in our trademark research.
The territorial scope of trademark protection
When it comes to trademarks, the rule is simple: a trademark is protected where it is registered. When it comes to proving genuine use of a trademark, this must be demonstrated in the territory where the trademark is subject to revocation proceedings. At Paperz IP, we are able to conduct these searches in many jurisdictions, thanks to the sources mentioned above. For word marks, provided the mark is in Latin characters, we will always find sources which we will translate to ensure they meet the search criteria. When the word mark is in a different alphabet, we carry out a preliminary search to prepare the quotation and assess our chances of success. It is, however, very rare for the geographical scope of a search to pose an obstacle for us. The most recent countries covered by such searches? Peru and Turkey!
Find out more about our sources on trademark law this way
So, do you need to carry out an international documentary search to support your case? Don’t hesitate to get in touch.
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