Choosing a trademark is something that must be done correctly from the start. Conducting a search (often called a “trademark availability search”) prior to filing an application is an inexpensive best practice that allows applicants to obtain a higher degree of success in the protection and registration of their rights.
It is an optional, but often crucial part of the process of adoption and successful enforcement of a trademark.
What does a trademark search cover?
A careful search, conducted by an experienced professional, can help to deal with or avoid some of the most common pitfalls that may bar registration. Most importantly, a trademark search will help discover potentially conflicting prior applications or registrations. In addition, it can help address or avoid potential refusals by the Trademark Office, as well as third-party oppositions, that can make the cost of prosecuting registration of your rights spiral. It may also help to anticipate and foresee potential problems that use of the trademark in the local market might face.
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.
After 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.
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.
