Why is it important?
Conducting a trademark search in most jurisdictions prior to filing a trademark application (often called a “trademark availability search”), is a cost-effective measure that allows applicants to obtain a higher degree of certainty for the registration of their rights, based on the discovery of potentially conflicting applications or registrations.
In essence, a search is intended as to guide to help our clients make the most appropriate and cost-effective decisions.A careful search, conducted by a professional, provides an informed opinion that can help to avoid some of the common pitfalls that may bar registration, such as refusals, oppositions and cancellations that can make the cost of registering your rights spiral. It may also help to anticipate and help foresee potential problems that use of the trademark in the local market might face.
What does a trademark search cover?
Upon conducting a search, our experienced attorneys will issue a written report commenting and analyzing, based on their personal experience, on any perceived issues pertaining to the mark’s:
- Inherent distinctiveness and/or descriptiveness, according to the criteria historically followed by the local trademark office (or registration authority);
- Adverse meanings associated with the mark in the local language
- Likelihood of conflicts arising in connection to registrations and/or applications filed by third parties on prior dates, including local well-known or renowned marks.
And, finally, the report also include comments on the potential registrability of the application. This may cover any adverse statutory or regulatory circumstances that may affect the marks registrability and advise on how to best approach any such eventuality.
In essence, a search is intended as to guide to help our clients make the most appropriate and cost-effective decisions, according to the circumstances and the realities of trademark law and practice in the jurisdiction.
What are the limitations?
First, most searches are conducted exclusively based on the records to the Industrial Property Registrar or trademark office. This is sometimes called a “knock-off” or “availability search.” It is possible that certain distinctive signs are being used in commerce, without their owner having filed for registration. If this is a potential concern, conducting a “full search” or a “comprehensive search” for use in commerce is advisable. This kind of search would depend on the mark’s particular characteristics and the goods or services it is intended for.
Human error and technical limitations are also factors to consider. While utmost care is employed in conducting every trademark search, limitations inherent to the Industrial Property Registrar’s database and the examining official’s personal opinion are factors that may affect the results. For instance, certain trade mark offices have no capabilities to allow third parties to search for visual similarity with logos or designs registered by others.
We can assist you
For more information and to request quotations, please do not hesitate to contact us.
Luis D. Acuña
tel. 00 (506) 2221-9058
LDAcuna@AcunaLegal.com
