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29.08.2017 20:10
Trademarks

Before filing a trademark application: Check for grounds for refusal and similar trademarks

Not everything can be registered as a trademark and not everything can be infringed. Trademark searches reveal the risks at an early stage and protect against misinvestments.

By: Jens Liesegang

Before filing a trade mark application: check absolute grounds for refusal and similar trade marks

It is often very difficult to find a suitable brand name and if you have finally found it, you want to secure it quickly. Unfortunately, often someone was already faster or the brand name sounds so ingeniously and can't be registered. As a layman, it is difficult to assess what is basically registrable and what infringes other trademark rights. A professional trademark search, also known as similarity search or availability search, is an option here.

Why is such a trademark search useful?

In short, it protects against further costs: either with regard to lawyer's and trademark office costs because the trademark is fundamentally not registrable or even before quite considerable further lawyer's costs, perhaps also claims for damages in the event that the trademark is confusing with earlier trademark rights.

What does a professional search report look like?

A good search report is prepared by a lawyer specialized in trademark law. Here, the individual providers are already different, as searches are often shifted to non-lawyers for cost reasons. However, since questions on the registrability and likelihood of confusion are highly dependent on case-related jurisdiction, only a well-trained lawyer can correctly assess risks.

Furthermore, the search report should also make a statement as to whether the sign is registrable as a trademark in principle. For example, purely descriptive information is not registrable. Such information describing the characteristics of the goods or services to be protected (such as colour, location, size, etc.) should be freely available to everyone. However, information that is not in principle understood as indicating the origin of the goods or services as originating from a particular company is also not registrable. 

Also a specification as to whether the character may have a negative meaning in other languages should not be missing. Especially abroad, if this has not been checked, there can be very unpleasant surprises (e. g. Nissan Pajero).

However, the most important part is the listing of trade marks which, because of their similarity, give rise to a likelihood of confusion. They should be accompanied by a complete extract from the register and only those marks should have been selected that actually represent a risk. Many search reports simply contain only the long list of trademarks that the search tool used in each case has ejected. In this way, the client is left alone with his question as to what constitutes a risk.

Ultimately, it makes sense for the report to include a list of all trademarks found, even if they do not represent a risk. This way, it is possible to prove later that certain brands were seen.

Our search reports also contain a brief overall assessment with a clear statement of the likelihood that the trademark will be registered without contradiction.

What is the best way to proceed?

After you have come up with a sign, you should first use a short Google search to find out whether the sign is already in use. You will then also quickly recognize whether it is a common descriptive entry and can delete it from your list free of charge. If nothing has been found, you can either do a short free search for identical trademarks yourself. TMView is the ideal solution here. If you find older trademarks, it is usually not worth pursuing the project. TMview also offers a similarity search option, which is very rudimentary and does not find all trademarks, as in a professional search. As soon as they can't find any more conflicts (which can take some time) they should be asked to do a research.

How much does such a search cost?

The prices on the market are quite different for trademark searches. Our costs for trademark searches are reasonable and can be viewed in our overview of costs for trademark searches and the searches can also be commissioned immediately.

How long does it take to receive it?

We deliver the search reports within one working day. If you are in a hurry, just give us a call. Then we'll do the research right away.

We are happy to advise you free of charge on all searches, both in the run-up to the event and on the report. Just ask us!



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