A trademark search allows you to know beforehand the probabilities a trademark has of being successfully registered. Before you go ahead and invest your money registering a trademark, knowing the probabilities the trademark has of actually being registered will allow you to save time and money by not proceeding with a trademark registration that has little to no chance of registering.
What is a trademark search report?
A trademark search report is a report done by one of our local trademark agents and consisting of 4 parts:
- Analysis of the elements that are included in the trademark;
- Search of prior trademarks that may be an impediment to registration;
- An attorney’s opinion on the registrability of the trademark;
- Recommendations for enhancing registration probabilities when needed.
Trademarks will not only be refused if identical or similar trademarks exist. There are a number of other factors that must be taken into account that could cause the registration office to refuse registration.
Other reasons a trademark may be refused:
- Merely descriptive or deceptively misdescriptive;
- Prohibited signs such as flags/coats of arms of member states/countries, the olympic symbol, red cross symbol, etc.;
- Immoral or scandalous trademarks – racial slurs, etc.;
- Trademarks that falsely suggest a connection with persons or entities;
- Primarily geographically descriptive or deceptively geographically misdescriptive.
If a trademark complies with all necessary factors for one country, does this mean that it will in another?
NO! What may or may not be accepted varies from country to country. Mainly for three reasons:
- Differences in interpretation. Some trademark offices interpret what can be and what cannot be a trademark differently. For example, although a red cross cannot generally be accepted, countries such as Switzerland will not accept any design that may eventually resemble a red cross, regardless of how small or deconstructed it looks. Other countries are more relaxed in what constitutes a red cross and will accept similar designs. Differences in interpretation and common practice exist from country to country.
- Differences in local customs. For example, one of the reasons trademarks may be refused is if the trademark may be considered immoral. While the image of a women in a bikini can be included without a problem in a trademark to be registered in Germany, a mark like this will probably be refused in Saudi Arabia.
- Differences in national trademark law. If your trademark will include the image of a crown, this by itself will not be an issue in most countries. However, in the United Kingdom, local trademark law states that a representation of the Royal Crown or similar will be refused. In New Zealand, a trademark that appears to be derivative of Maori text or imagery or may be deemed offensive to the Maori will be refused.
Trademarks exist to differentiate one person's (or company's) products or services from those offered by another.
When a trademark is presented, most trademark offices will examine the applied for trademark to see if any identical or similar marks are currently registered or in process. What the authority in each country will try to prevent is accepting trademarks that may produce confusion in the market due to similarity. What constitutes a similar trademark varies from country to country. Some countries are considerably more picky then others.
Similarity is not limited to a side by side comparison. Similarity may be in:
A side by side comparison must be made to ensure that the average consumer would not be confused between two similar marks, or link one trademark with the other. marks appearing similar
Not only must the graphic or design elements of the trademark be considered, but words that are included must be considered as well:
INOVVO vs. IMOVO
Although both words are clearly spelled differently, when written they are graphically very similar.
Be they synonyms or the same word in different languages, trademarks will be considered similar if the impression made on consumers leads them to link one with and the other.
Dolphin vs. Delfino
Determining whether trademarks are conflictive in meaning should be done in a two-step process.
- Determining if the main elements of both trademarks are identical or closely linked in meaning. This would be the case if words from different languages are used but both allude to the same concept, or if synonyms that in context point to a similar concept are included.
- Determining if the consumers of the products or services may be confused. Interpreting who the average consumer will be varies between products or services. The consumer who buys parts and fitting for air and space vehicles is likely (let’s hope) to be more discriminating and source-conscious than the consumer purchasing dairy products.
Trademark similarity in sound or phonetically
Determining whether or not trademarks are conflictive in sound will be done through a phonetic equivalency test. This can be done by simply reading out loud the alphanumeric elements of the trademark.
So, why have a professional provide a trademark report?
Our trademark attorneys will give their opinion on registrability and mention any potential conflicts or impediments that may be an impediment during the examination. Since trademark practice does vary country by country, do not be surprised if, when receiving multiple trademark search reports for different countries, the registration probabilities and attorneys' recommendations are different according to the country.
Attorneys can also provide recommendations for improving the chances of success when needed. If the results of the trademark search reports show that successful trademark registration is unlikely, our attorney will point out what steps, if these exist, may be taken in order to increase probabilities of success.
Does a positive trademark search report give me a 100% chance of success?
No, it does not. Although trademark professionals and attorneys are assigned for the completion of our trademark search reports, trademark examination is not an exact science and precise predictions are not possible. Our trademark professionals’ analyses are subjective, just as the analysis that will be carried out by the registration office’s examiners. Although circumstances are rare, trademark search reports may not identify all potential grounds for refusal.
If you have any questions regarding this or any other services, please do not hesitate to contact us.
Author: Kathryn Bouchard - Trademark Consultant @ iGERENT