Why Conduct a Trademark Search? Beware of Similarity, Not Just Identity!

Why Conduct a Trademark Search? Beware of Similarity, Not Just Identity!

Registering a trademark is a vital step in building a strong brand. However, before you file an application with the Polish Patent Office (UPRP) or the European Union Intellectual Property Office (EUIPO), it’s essential to conduct a trademark clearance search. Unfortunately, many entrepreneurs make a basic mistake—they only check if an identical mark appears in the UPRP database. That’s not enough! Why? Because the real risk often lies in similar trademarks, not just identical ones. Moreover, it’s crucial to check more than just the UPRP database.

 

What Is a Trademark Search?

A trademark search is an analysis aimed at assessing whether a specific mark can be safely registered. The search evaluates:

  • Whether the mark meets registration criteria (e.g., it’s not merely descriptive),
  • Whether it conflicts with earlier registered marks—both identical and similar,
  • Whether its use would infringe on the rights of others.

 

Trademark Search and the Legality of Use

It’s important to emphasize that a trademark search is not only about checking if a mark is registrable, but also whether its use in business could infringe third-party rights.

Even if you don’t plan to register your mark, using it without prior clearance can lead to serious legal consequences. In practice, you might unknowingly use a mark similar to an already registered trademark, which could result in a cease-and-desist letter, a lawsuit, or even a claim for damages.

That’s why a trademark search should be treated not just as part of the registration process, but also as a preventive check on the legality of your marketing and branding activities.

 

Why Is a Similarity Search Crucial?

When it comes to trademarks, the authorities (in response to an opposition from an earlier trademark owner) can refuse registration not only if the mark is identical, but also if it is confusingly similar to an earlier mark in the same or related industry. The assessment covers:

  • Pronunciation (phonetics),
  • Visual appearance,
  • Semantic meaning,
  • And the range of goods and services the mark is intended for.

 

Example: Collision of Similar Trademarks

Imagine an entrepreneur wants to register the trademark “Toffeina” for energy drinks. A search in the UPRP database shows no identical marks—everything seems safe. However, a professional search reveals that the wordmark “Tofina” was previously registered for the same type of beverages.

Although these marks are not identical, they:

  • Sound very similar,
  • Have a comparable structure and theme,
  • Are intended for the same goods.

In such a scenario, if the owner of “Tofina” objects, the office may reject the “Toffeina” application. What’s more, if the entrepreneur starts selling “Toffeina” drinks, the owner of “Tofina” could take legal action for trademark infringement.

 

Why Checking Only the EUIPO Database Is Not Enough

The EUIPO’s eSearch engine only finds trademarks filed or registered with that office. Yet, in the EU there are trademarks registered with the national IP offices, for example: with the DPMA in Germany or with the PPO in Poland. Moreover, marks protected via international registration (under the Madrid system at WIPO) and recognized in particular EU countries are also protected.

Checking only the EUIPO’s database will not reveal marks registered with the national IP offices nor with the WIPO designating other territories than the whole EU!

 

Why Online Search Engines Aren’t Sufficient

Patent Office or EUIPO search engines can find identical marks or those containing specific phrases. But they won’t catch all similar marks, especially if the spelling differs slightly, or if synonyms, neologisms, or phonetic variations are used.

 

A comprehensive similarity search requires:

  • Knowledge and experience in interpreting trademark law and case law,
  • Skills in phonetic, visual, and semantic analysis,
  • Access to advanced similarity search tools, which are often paid—our patent law firm uses top commercial trademark search software.

 

What’s at Stake If You Skip the Trademark Search?

Filing a mark that conflicts with someone else’s can result in:

  • Rejection of your trademark application due to opposition from an earlier rights holder, meaning you lose the official fee and may also incur opposition proceedings costs.

Using a mark that collides with an earlier one can have severe consequences:

  • A court order to stop using the mark, which may force an expensive rebranding,
  • In some cases, financial claims, which may result in you being required to pay eg, damages.

 

Trademark Search Is an Investment That Pays Off

A thorough trademark search takes several hours and often uses commercial search engines that require a subscription. Naturally, a proper trademark search is not free.

However, a trademark search is not an expense, but an investment in your brand’s security. A professional similarity analysis helps you avoid legal pitfalls, brand loss, and unnecessary costs.

Don’t take risks — have your trademark searched by a trademark specialist before investing in logo design, a website, or an advertising campaign.

Contact us to have your trademark professionally searched!

 

    Contact us!

    Are you looking for an IP attorney's support? Describe the details of your case.
    We will get back to you as soon as possible.

    Also check

    Trademark Registration – What to Choose: Word Mark, Logo, or Graphic?

    Discover the pros and cons of registering a word mark, logo, or graphic as a trademark. Learn how to choose the best protection strategy for your brand and secure your business with expert advice from patent attorneys in Poznań.

    read more

    Trademark Attorney – Your Partner for Trademark Registration in Poland and the European Union

    Secure your brand in Poland and the European Union. Discover how a Polish or EU trademark attorney can help you with effective trademark registration and protection. Learn why partnering with a professional trademark law firm is essential for your business success!

    read more

    Why Conduct a Trademark Search? Beware of Similarity, Not Just Identity!

    Thinking about registering a trademark? Don’t make the common mistake of checking only for identical marks! Discover why a professional trademark search – focusing on similarities, not just exact matches – is essential to protect your brand and avoid costly legal trouble. Learn how a thorough search can save you from rebranding headaches, lawsuits, and wasted investments. Read our article to find out how to secure your brand the smart way!

    read more