Trademark Search: Why is it important & How does it work?
What is a search for a trademark?
When registering a trademark, there is a chance of violating the rights of someone else's trademark. Therefore, a trademark search could help you avoid a collision with older trademarks.
The trademark search looks for trademarks that have been filed or are already registered in the trademark register. This includes checking for older identical or similar trademarks (identity and similarity search) (identity and similarity search).
Since a trademark's main purpose is to set one company's goods or services apart from those of other companies, it's important to think about whether it might be confused with an older trademark or just be associated with it when choosing a trademark.
Should this be the case, the owner of the earlier trademark can request the cancellation of the younger trademark, or this can be appealed at a later date.
Why should you do a trademark search?
It should be noted that the EUIPO only checks the existence of absolute grounds for refusal prior to registration, i.e. whether a sign can be registered as a trademark.
The EUIPO doesn't check to see if your trademark infringes on older third-party rights (relative grounds for refusal), but owners of older trademarks that are the same as or similar to yours can object to your registration.
A trademark search can help you find out if there are any risks of absolute or relative grounds for refusal before you apply for a trademark registration. This can save you time and money.
What does a good search for a trademark look for?
A trademark search is done to find out about other (older) rights and trademarks. A trademark search can also help a user find out who is doing business with similar brands in the same areas.
When searching for a trademark, the focus is always on the service or good areas where the provider is active and where the trademark should offer protection. The trademark search also helps with the registration of the trademark. This is because the trademark search lets you know exactly where similar trademarks are protected.
So, one's right to protect their own brand can be seen as being wider or narrower.
A trademark search is unique in that similar areas can also be important in the trademark area.
For example, if I want to approve a brand for an electronic musical instrument, both the product class for musical instruments (Nice class 15) and the product class for electronic functions of the instrument (Nice class 9) can be important.
This means that the protection for a trademark can cover more than one Nice class. The same goes for older rights that may be from a different class or have words that are similar to my trademark.
It is important to recognize how strong an already registered brand is and how far this brand radiates beyond the actual brand name or the actual Nice classes.
Search by name or look for older trademarks
Before you apply for a trademark, you can do an identity search to see if there are any older trademarks that might conflict with yours.
The identity search tells you if the trademark you want to use is the same as one that was used before and is for the same goods or services as the earlier trademark.
Wordmarks with the same character sequence are considered to be identical. But one doesn't just compare the words of older brands that are the same; one also compares their Nice classes.
The best way to search for trademarks in EU is to use the EU's free database of trademarks.
Similarity Look for trademarks that are the same or similar
Make sure that your trademark is not the same as one that has already been registered. If there is a chance that a new trademark will be confused with or just linked to an older trademark, the new trademark can be taken out of the trademark protection system.
During the opposition period, the owner of the older mark can ask for the younger mark to be taken away, or it can be challenged at a later time.
Assessing the likelihood of confusion is hard because there are so many things to think about. Basically, the following criteria are to be checked:
How alike the goods and services are
Signs that look alike
What made the earlier mark stand out: Whether or not the earlier trademark is good or bad. A strong trademark is a well-known symbol that gets more protection than a normal trademark or one that isn't very distinctive. The chance of confusion goes up as the strength of the older brand goes up.
A similarity search looks at these basic things and keeps you from running into older brands that are similar. This can save you time and money.
How alike the goods and services are similar
What made the earlier mark stand out: Whether or not the earlier mark is good or bad. A strong trademark is a well-known symbol that gets more protection than a normal trademark or one that isn't very distinctive. The stronger the older brand, the greater the likelihood of confusion.
A similarity search looks at these basic things and keeps you from running into older brands that are similar. This can save you time and money.
Identity search is crucial
Before you apply for a trademark, you can do an identity search to see if there might be a conflict with an older trademark.
The identity search tells you if the trademark you want to use is the same as one that was used before and is for the same goods or services as the earlier trademark.
Wordmarks that have the same order of characters are considered to be the same. But one doesn't just compare the words of older brands that are the same; one also compares their Nice classes.
Search for Similarity
Make sure that your trademark is not too similar to one that has already been registered. If there is a chance that a new trademark will be confused with or just linked to an older trademark, the new trademark can be taken out of the trademark protection system.
The owner of the older trademark can ask for the younger trademark to be taken away during the opposition period, or they can challenge it later. Assessing the likelihood of confusion is hard because there are so many things to think about.
In general, the following things must be looked at:
How goods and services are alike
Signs that look alike
Differences between the first and second trademarks: Whether or not the earlier mark is good or bad. A strong trademark is a sign that is very well-known and gets more protection than a normal or weak trademark. The chance of confusion goes up as the strength of the older brand goes up.
A similarity search looks at these basic things and keeps you from running into older brands that are similar. This can save you time and money.
How well a brand can be protected
In a trademark application procedure for putting a mark in the trademark register, the office in charge checks to see if the formal and material requirements set by the law are met.
Formal requirements have to do with meeting the requirements for getting a filing date, making sure the applicant is qualified to be the owner, paying fees on time, and meeting other registration requirements (e.g. form and content of the application, trademark form, representation, etc.).
When it comes to the material requirements, you check to see if the sign is big enough and if there are any absolute reasons to say no.
The brand capability check looks at whether a brand is good for telling the difference between the goods or services of one company and those of another.
The EUIPO also checks automatically to see if there are absolute reasons to say no:
if a sign belongs to the public or not
Whether a product's shape defines what it is or if a product's shape or packaging shape is technically necessary.
Whether or not the sign is wrong;
if a sign goes against public order, good morals, or the law
If one of these things is true, the mark might not be protected by a trademark.
Look for an identical company name
The businessman's name is the name of the company. He does business and signs his name under that name. The company is in the commercial register and has some protection for its name in the region.
When you register a trademark, you protect the company name in every way. The law on trademarks can protect its goods and services.
As part of the company search, it is checked to see if the name you want for your business has already been taken by someone else.
Who does a search for a trademark?
You can do a trademark search on your own or hire a professional to do it for you. People often think that the Trademark Office is looking for older trademarks of the same type.
The EUIPO doesn't check it, though. They only look for absolute reasons to say no.
Should I search for a trademark myself or hire someone to do it?
You can do a trademark search on your own, of course. But trademark search can sometimes be hard to do because of the law. Due to years of experience and in-depth knowledge of trademarks, a professional trademark search can offer a wide range of services and precise evaluations of the search results.
EuTrademark.eu gives you a full report of your search. We specialize in trademark law and the protection of intellectual property with trademarks.
We help you choose the search and the classes of goods and services to look for. We also help you find older trademarks that are similar and figure out if there are any absolute reasons for refusal. You will get a full report on your search that gives you an overview of the results and more information about the brands that have problems.