Need for a Trademark Search
The first step before filing a trademark is to conduct a trademark search. The applicant should not infringe third-party rights by using a trademark similar to those already registered. A comprehensive trademark search is advised to ensure that a similar mark does not exist in the business.
The reason why a trademark search is essential is due to the cost implications that come with the registration process. The entire registration is expensive, and if it is left for the mark to be contested during the process (Opposition) by third parties, it consumes more time. Therefore, it is essential that an applicant is ready with all information concerning the proposed trademark and understands whether any similarities exist. In case the similarity index is high, there is always a possibility to modify the trademark. Further, it may be easier to spot identical trademarks. However, the applicant must remain vigilant about confusingly similar marks.
Another scenario may arise if a trademark search is not conducted before the trademark application. Certain countries may allow the publication or registration of the trademark without comparing the existing trademark. Thus it also leaves third parties to file notices of opposition after registration. Therefore, if the opposition is filed after registration, the economic costs of going to the court and the impact on the business would be very high.
Strategy to Conduct a Trademark Clearance Search
1. Preliminary Trademark Search
One must approach a search for similar trademarks with a specific strategy. The first step would be to conduct a national search. A country’s national database can be accessed to look for similar trademarks. These are cost-effective and easy to access. Some examples of national trademark databases are
1. Australia – Trademark Assist
2. India –Â Public Search for Trade Marks
3. USPTO – Trademark Electronic Search System (TESS)
National searches could be sufficient for smaller enterprises; however, external searches could be equally important for companies looking to expand in the future. WIPO’s Global Brand Database has records from 55 national and international collections that can be accessed here.
Further, the trademark database portal link provides several intellectual property offices in various countries. These links can be accessed to conduct trademark searches in specific countries. Additionally, you can use the TMview portal for conducting trademark searches in the participating offices.
However, certain countries do not have online databases that could aid a trademark search. In such cases, it would be advisable to approach firms specialized in the domain. The applicant can also access the national trademark registry and search the records.
While conducting the trademark search, the applicant must pay attention to the class and relevant classes in which the trademark has been sought for registration. Similar representations of the word mark, related artistic images, and phonetically the same words must also be scrutinized.
2. Trademark Clearance Search
While the first step would be to conduct a preliminary search, the same is not enough for the smooth usage of a trademark. A trademark search is an initial search that is restricted to trademark databases. This alone does not give a green signal for registration. Certain marks do not exist in these databases, and a more comprehensive search would be required. Therefore, a trademark clearance search would go a long way to ensure protection. The primary difference between trademark search and trademark clearance search is the research’s depth and the resources accessed for the same. The following are the essential pointers that can be used while conducting a trademark clearance search.
a) Since the broad elimination of fairly identical and similar marks is already done in the preliminary search, closer scrutiny would be required to search for similar trademarks. At this stage, a legal opinion can be sought, and index searches would help identify companies using similar names in the search term. Further, if a similar trademark is found, an In-use Verification search could help ascertain whether the party with priority rights is using the brand correctly. If needed, this can be used as grounds to challenge the registration.
b)The search should encompass all variations of a word e. the variations with prefixes, suffixes, and plurals. The comprehensive search should also include a search for phonetic equivalents, alternative spellings, anagrams, marks with similar components, and marks that start or end the same or have other similarities.
c) This search should not be restricted to mainstream databases. The applicant may look at the following resources to conduct a comprehensive search. These are important as sometimes newly registered marks take time to be updated on government databases. Some countries like the U.S also operate on the principle of usage, and it is not necessary that a third party would have rights only when the mark has been registered.
| State Databases | Business Name Registries | Product Catalogues and E-commerce Sites |
| Central Databases | Business Directories | Magazines |
| Trade Directories | Trade Associations and Publication. | Newspapers |
| Product Catalogs | Internet Search Engines | Online Databases |
| Internet Domain Name Registries | Social Media Sites | Trademark Journals |
| Madrid Protocol Coverage of U.S Designated Marks | General and industry-specific common law resources | Judgments |
d)An applicant can expand the scope of the search by identifying related goods and services. The classes of these goods and services may be different, however, if they are closely connected to the class where the proposed trademark would be registered, it can pose a problem.
Conducting a trademark clearance search before filing is a cost-efficient preventive measure, and it can minimize opposition and expedite the registration process. Further, it ensures that the applicant is mindful of the rights of third parties who have already been using an identical or similar trademark.
