Trademark search

Trademark search

Purpose of a trademark search

 

Before submitting a trademark application

It’s worth checking if the trademark has a chance of getting registered, meaning to check if:

  • there are absolute obstacles to obtaining protection for the trademark (i.e., if the office can refuse to grant protection to the trademark “ex officio”),
  • there are prior trademarks that conflict with the trademark under consideration, which could potentially not only hinder its registration but also its legal use.

Trademark search can prevent unnecessary spending on an application that carries a high risk of failure.

Trademark research is not mandatory but recommended.

 

Before  starting usging a new brand or company name

It’s advisable to conduct trademark research before introducing a new product/service brand or a new company name.

Trademark search will determine if there are prior trademarks with which the use of our brand or name would conflict – because in such cases, the owner of the prior trademark may oppose the use of our brand/name. Opposition to use primarily involves initiating civil proceedings and asserting claims (such as cessation of use, compensation, restitution of unjustly obtained benefits, etc.) – before a court.

 

Scope of a trademark search

It’s not sufficient to rely solely on the UPRP (Polish Patent Office) search engine.

In Poland, three groups of trademarks are protected:

  1. Polish (registered with the PPO),
  2. European Union (registered with the EUIPO),
  3. International registrations designating  the PPO or the EUIPO (registered with WIPO).

To fully search a trademark in Poland, all three groups of trademarks need to be searched.

 

How do we conduct a trademark search?

A trademark search is conducted by individuals with appropriate training and expertise, and the results and conclusions are always verified by a qualified trademark attorney. The risk of collision with prior trademarks is assessed based on our experience, knowledge of the PPO and the EUIPO practices, as well as the established EU case law.

Our patent law firm uses commercial software that has access to necessary databases and operates algorithms to search for similar trademarks – to varying degrees of similarity. Access to this software incurs a fee.

Conducting trademark search, verifying its findings, and preparing a report entails several hours of work. The search and conclusions are always verified by a qualified trademark attorney with years of experience.

 

Trademark similarity search

It’s not enough to conduct trademark research solely for identical matches. A prior trademark can still pose a barrier to using our trademark even if it’s only similar, and even if it’s protected for goods or services only similar to ours. Therefore, it’s crucial to conduct trademark search for similarity as well.

 

EXAMPLE 1

Let’s imagine there is a prior trademark “KLIK” protected for yoghurts. Suddenly, “milk CLICK” appears on store shelves.

The goods are different, right?

Designations: “KLIK” and “CLICK” are different – they don’t look the same.

Yet, the risk of misleading consumers is very high: yoghurts and milk are very similar goods, usually produced by the same manufacturers and placed next to each other on store shelves. The words “KLIK” and “CLICK” sound the same. In radio advertising or word-of-mouth marketing, they are indistinguishable. The average consumer who knows “KLIK” yoghurts and hears about “CLICK” kefir will surely assume they come from the same producer. Hence, a costly dispute is just around the corner.

Therefore, we have a collision that wouldn’t be identified by conducting an only trademark identity search for the brand “KLIK”. A similarity search would be necessary.

EXAMPLE 2

If we were to start offering yoghurts under the brand “DANONE NOWAK”, would it be reasonable to assume that the owner of the “DANONE” yoghurt brand would not object to our actions? Clearly not. And yet, the “DANONE NOWAK” and “DANONE” marks are not identical!

We’ve heard of situations where a para-law firm, in search report delivered to a client “for free”, indicated that the examined mark is indeed taken, but adding the client’s surname to the mark would resolve the trademark collision problem. The examination was not signed by a patent attorney or even a lawyer. The client was encouraged to file a trademark including their surname (in order to generate profit for the para-law firm).

Adding a surname is clearly not enough to avoid collision. The recommendation from the “free” trademark search could expose the client to costly disputes in administrative (opposition to the trademark application) and civil (lawsuit) proceedings.

 

Trademark search report

The result of a trademark search is a search report outlining any potential risks associated with the existence of prior trademarks and providing recommendations regarding the use and protection of the client’s trademark in a given territory.

In the report, we indicate whether, in our opinion:

  • there are absolute obstacles to obtaining protection for the trademark – i.e., whether the patent office may refuse to grant protection to the trademark,
  • there are prior trademarks that conflict with the examined trademark, which may hinder not only its registration but also its legal use in the analysed territory,

and we assess the chances of obtaining protection for the trademark.

 

 

Ask us about our offer for your trademark search!

Please specify the goods/services and the territory where your trademark will be used..

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