Trademark searches: an essential step on the way to a new trademark

Information required to define a search strategy

• The trademark: If the trademark consists of a word and a device element, it needs to be decided whether searching for the word element is sufficient or whether the device element also needs to be searched separately.
• The products for which the trademark will be used: The relevant products need to be allocated in one or several classes of the 45 classes of the Nice Classification to search in the correct classes. It often makes sense to conduct a broader search to also cover similar goods and services. This can mean, for example, searching for "software as a service" in class 42, even if the trademark should merely be used and registered for "downloadable software" in class 9.
• The relevant territories in which the trademark will be used: As a rule of thumb, the search should cover the countries where the trademark will be used within the next five years. It should also cover the country in which the product is manufactured and labelled with the trademark.

Search options

There are various options for trademark searches, each with certain advantages and disadvantages. In general, the more superficial and therefore less expensive the search, the higher the risk of overlooking potentially problematic earlier trademarks:

• Identity searches: This option is only available for word elements. It is a search only for identical word elements that will allow earlier trademark applications or registrations consisting of or containing the identical word element to be found.
  • pro: Low costs, as it can be done via online databases on the web.
  • con: Earlier similar trademarks, even if just one letter is different, that may block use or registration cannot be found. Thus, the risk of overlooking earlier potentially problematic trademarks remains high.

• Screening similarity searches: Search for similar trademarks using specialised AI-supported software, without further evaluation by an analyst of the search provider.
  • pro: Reasonable costs and clearly reduced risk of overlooking earlier potentially problematic trademarks.
  • con: Relies on AI-supported software, which might lack the experience of an analyst.

• Analyst similarity searches: A specialised search provider uses sophisticated algorithms to find similar trademarks. The results are also evaluated by an analyst of the search provider.
  • pro: Clearly reduced risk of overlooking earlier potentially problematic trademarks. Additional improvement of results by analyst review.
  • con: Rather high costs. Does not detect all possible similarities, such as synonyms, translations or device elements.

Regardless of which search option is used, it is recommended to have the results evaluated by an experienced trademark attorney according to the applicable law and practice. Only such an evaluation will allow a proper risk assessment within the natural limits of each search.

No search is perfect

Due to delayed database updates, database errors, priority filings and prior unregistered rights, just to name a few, no search will ever bring 100 % security. The aim is to give decision-makers a picture of the potential risk that can be identified via a search (for the scope of the searches, see above).

Summary and recommendations

• Trademark searches are highly recommended to identify potential risks. Choose a search option according to the relevance of the brand and the risks you are willing to take.
• If possible, do not rely on only one option for the new brand but have back-up trademarks prepared that can be used in case of problems.
• Be aware that a certain risk of conflicts will always remain, even if the search comes out clear and the trademark is registered.
• Once the trademark is registered, do not forget to establish a monitoring service (see our blog)

authors: Gudrun Irsa-Klingspiegl, Dominik Hofmarcher