On your marks: The importance of trademark searching

It takes time, resources and money to create and launch distinctive and effective brands. But how can you be sure that the brand name you have chosen is really yours to use? Trademark searching provides a quick and simple means to investigate the availability of your chosen brand in your field of business, anywhere in the world.

In most instances, trademark searching is an important first step in any trademark registration or brand launch strategy, as it enables companies to avoid adopting brands that infringe third-party trademark rights. The attempted registration of such names can be costly and time-consuming, as it will invariably result in the other party raising an opposition to the chosen mark. If the opposition occurs after the ‘new’ mark has been put into use, production processes may need to be halted, products recalled, advertising campaigns cancelled, and new branding developed and launched at short notice, all of which have considerable cost implications.

How to check your chosen name is free

Search engines are useful tools for checking to see if a trademark that is the same or similar to a chosen mark is already in use and, if so, where and for what products or activities. However, such online searches will not identify marks that have already been registered, but not yet launched into a marketplace – or at least not yet in such a way that they appear highly ranked in an online search. Only a detailed trademark availability search in official or purpose-built databases will be able to identify such potential conflicts. 

Trademark searches will typically fall into one of the following categories:

• Identical trademark search: Identifies marks or devices that are visually or phonetically identical;
• Similar trademark search: Identifies identical and confusingly similar marks;
• Trademark search with opinion (‘Search with advice’): Includes an attorney's recommendation on the results of the identical or similar trademark search based on their consideration of the prior marks identified;
• Index search: Identifies companies with identical/similar names to the search terms;
• In-use verification search: Examines whether a third party with prior rights is using its trademark rights correctly, which may provide grounds to challenge a registration; and
• Trade name search: Identifies trade name rights that may conflict with your desired trademark, by Identifying companies with identical/similar names to the search terms.

In addition, a trademark attorrney can also examine a chosen mark for unintended meanings or associations. This is of particular importance should a company be launching its product or brand in certain overseas countries where you could be caught out by linguistic differences.

Finding the right support

As critical as trademark searching is, many companies put off undertaking availability searches, as so many services in this area tend to result in volumes of unsorted, unmanageable and often irrelevant data that needs to be sifted through by the brand owner.

To assist businesses, Novagraaf has designed its ‘Search with advice’ service to consolidate and analyse the results, providing brand owners with a clear, insightful report that will assist speed in decision-making, and take the pressure off internal marketing and IP teams. For example, it includes:

• An overall legal opinion rendered by an experienced Novagraaf trademark attorney summarising key findings, such as ability to register, potential issues, availability and recommendations;
• A consolidated risk assessment chart by country for ease of comparison;
• A per-country legal opinion rendered by a local expert that includes the position of a potential trademark in all relevant classes, the likelihood of achieving a successful registration and recommendations for next steps.

A 'basic search' service is also available for those looking only for a topline overview of results in several or all EU countries. The complete picture is assessed and analysed by a Novagraaf specialist, as opposed to the more detailed report, which typically includes advice from our local agents in each country

For more information on Novagraaf’s search services or to request a sample report, please contact us below. You can also undertake an initial trademark check for free using our IP2Check service.