Trademark Search: identity and similarity

Before filing a trademark application it is always advisable to conduct a trademark search in order to verify the existence of earlier trademarks, identical with and/or similar to your trademark in your business field.

When making a trademark search

The best solution is to conduct this search in the very first phase, namely well before launching a brand on the market and even before commissioning its graphic design: when you choose a brand, the first step is to verify its availability from the legal point of view. The other steps (graphic processing of the logo, filing the trademark application to the competent Authority, trademark use on the market) should follow and not precede this verification.

Trademark identity and trademark similarity search

The search must be conducted not only among identical earlier trademarks but also among similar trademarks, namely trademarks having different characteristics but also something in common: for example, we can compare two trademarks – one is written “chi” and the other is written “ki” – : they are different but have some characteristics in common (in many case they pronounce the same) therefore they maybe could be considered similar in a judgment of comparison.

For this reason we suggest to conduct a trademark similarity search which must be performed in the relevant Trademark Registries. For example, if you want to file a trademark application in Italy, the search will be performed among the trademarks with legal effect in Italy, namely national trademarks, EU trademarks and International trademarks designating Italy.

The rule is that the search must be performed among the brands having effect in the territory of interest. For example, if you want to file a trademark in the United States, it will be necessary to conduct the search among the brands having legal effect in the United States, then US national brands and international brands designating the United States.

Limits of the trademark search in the Web

It is important that the search (which have to be a trademark similarity search) is performed in the relevant trademark registries. If you conduct a search only on the web with the aim to discover whether the trademark of your interest is used in the web, such search will not be able to trace all those brands which, although not used and therefore not visible on the market, exist form the legale point of view and are valid and effective.

Let’s assume that you want to file an “XY” trademark application which distinguishes shoes. One year ago another person might have registered an identical “XY” trademark application for the “shoes”, but such trademark could not still be in the market. The only way to track down this previous owner is to search in the relevant trademark registries that provide information about the brand type, its owner and other relevant data (filing and registration date, renewals, list of products and/or services).

What kind of risks in absence of a trademark search

Do not conduct the search before proceeding with the filing of the trademark exposes both who simply uses the trademark and who has filed a trademark application to the actions by the previous trademark owners.
The objections can be different, starting from the cease and desist letter with the request for the withdrawal of the trademark to the opposition (administrative proceedings generally filed to the competent Trademark Office, for example Italian Trademark Office if the opposed trademark is Italian or European Union Intellectual Property Office if the European Union trademark is opposed), till the suit to the Court.

Eva Troiani law firm will conduct trademark searches on your behalf. She will promptly inform you of any problems that may occur and she will propose you valid solutions.

Trademark surveillance after registration

In order to protect your trademark it is advisable to carry out a trademark surveillance on your trademark: it consists of a continuous search in the market of your interest for ensuring that noyone files trademarks similar to yours.

The time to act are often very short. It is therefore advisable to entrust this action to professionals in this sector, who may guarantee a continuous and profitable control.

If you would like more information on time and costs (depending on the type of registration of your trademark), do not hesitate to contact us by phone or through the online form, we will be happy to provide you with all the necessary assistance.