Check of non-conflict Trademark before applying for the registration

Question

Hello, nice to know your website (just found out).

Four months after having applied for registering the trademark (in the European Union) of my company I've received an opposition for likelihood from a website of the same category, but just basing on the sound of the name.

My question is: Do some offices that can officially check the lawfulness of a potential Trademark in advance (giving an high percentage of accuracy in their analysis) exists - so that can avoid to lose other time and money? I guess that the same DB used by the Trademark office should be at disposal by anyone to be able to do this kind of inspection for enabling a successful application.

Thanks a lot in advance for your help,
Mariano

Answers: 2 public & 0 private

F56b616a4f
Lawyer

Dear Mariano,

Trademark Offices such as EUIPO (registering trademarks of the European Union) do not check the legal availability of the sign you wish to file and register as a trademark. And so, do not check and estimate in advance the novelty of a future trademark strictly speaking (this is due to the introduction of a right and an opposition procedure). The trademark Offices are essentially satisfied with a formal and administrative examination of the filing (regarding the formal requirements) and the control of distinctiveness and deceptive nature of the trademark (the other requirements on the merits) . If you are having fun filling "COCA-COLA" for drinks, "APPLE" for computers or "CHANEL" for cosmetics to the EUIPO for exemple, or a national trademark Office in Europe an the Italian one (UIBM), they will not refuse the said filings, only the owners of these well-known trademarks will react.

You can, of course, investigate directly on the EUIPO official Web site (eSearch Plus and TMview). But if applicable, you will only have access to existing identical trademarks and not to similar trademarks. It is essentially with respect to so-called "similar" trademarks relating to identical, similar or complementary products and/or services (the question does not even arise in the case of well-known marks which are automatically protected for all products and services even for those which they do not aim for) that the risk of confusion is appreciated and discussed (this being obvious and indisputable in the case of identical signs for identical products and/or services).

In these conditions, it is up to you to solicit your own prior art search and this necessarily represents a cost because you must – I strongly recommend – consult an IP specialist (trademark attorney, IP lawyer). We manage the trademarks and designs portfolios of many companies and we can assist you within all opposition proceedings and allow you to benefit from our "degressive" rates if you are interested. Do not hesitate to contact me in this sense.

Sincerely yours,
Simon

603e09d87b
Other Consultant

We are IP private investigators and regularly conduct trademark investigations for clients at any stage in the trademark application process (usually hired by their IP attorney, but work directly with brands as well). For example, if you locate potentially similar marks when preparing to file your application, you could have us conduct an investigation into the use of that mark (whether it is currently in use, how used, markets, if abandoned, when?, etc...). Taking such steps may help you avoid a possible opposition filing by the other party BEFORE they happen & you have invested your time & money in filing the application. We conduct investigations into companies/individuals all over the world, and have specialized in IP investigations as the heart of our company for over 13 years. Good luck to you in your endeavors. All the best, Tamara

Recent questions

Do people really steal invention ideas?

I sometimes see questions on forums like Quora about how to stop people stealing your invention i...

4 3361 2
Is interpretation of known historical facts protectable under copyright law?

I am looking for useful sources on protecting copyright. I am in the process of writing a book ba...

3 3416 2
Fair Use and news feeds

What is the current wisdom on compiling news feeds on a third party website so far as copyright i...

1 2299 0
Looking for good patent firm

How to find a good patent firm to help me apply patent in USA

3 2649 2
What constitutes 'prior disclosure'?

This might be a silly question but I’m a bit confused by ‘prior disclosure’ as it applies to pate...

2 2892 1

Do you have a question about your invention or intellectual property?
Search the questions below or post your enquiry to one of our experts via Directory.
(User questions are no longer posted publicly on this page.)