Importance of Conducting a Trademark Search Before Filing a Trademark Application

It’s great to know that you have made till here! It means you are now ready with a name for your company or product/service but not sure if it is exclusive and free from threats for you to roll with it.

Trademarks are the first and everlasting intellectual property a company can have. The name adopted should be unique and distinguishable when it is presented to the public at large. Many people assume that no one else think like they do and their proposed name is unique. But the reality check hits hard when the trademark search reveals that someone else has already taken the name and have been using it for a long time.

Therefore, a trademark search before applying for registration is highly recommended to check whether the trademark is similar, textually, visually, or phonetically to one or more earlier trademarks or contravening the provisions of law.

Foremostly, the need for the trademark search is because the name of company or product/service is the face of it. A detailed trademark search before finalising is the least expensive preventive measures that one can easily afford to take. Trademark search will ensure that the chosen mark won’t be conflicting with the brands that are already existing in the market. And obviously, through trademark search the trademark owner can avoid unnecessary litigation expenses.

The advantages of having a unique trademark registered are the perks such as rights of exclusivity and exceptionality. Trademark protects the brand and company in the long run. The trademark is the easiest communication tool between the company and the customers. Trademark protects the company from the potential rivals as they will have to face consequences of infringing it.

The above can only be relished if the mark is distinctive. So, how do we achieve that?

In India, the trademark search can be conducted in the following ways:

  • Trademark Public Search on Indian Trademark Office Website.
  • Company/LLP name search on Ministry of Corporate Affairs (MCA) website.
  • International applications entitling India under Madrid Protocol.

The trademark public search website is maintained by the Office of the Controller General of Patents, Designs & Trademarks, Department of Industrial policy & Promotion, Ministry of Commerce & Industry.

Before filing application, one must look through that the mark is not:

  • Excluded from protection by the Indian Trademark law;
  • Excluded because it is a well-known mark which is already protected;
  • Consisting of the international non-proprietary name for a pharmaceutical substance;
  • Another term prohibited for trademark protection.

Every trademark filed at all five centres of Trade Marks Registry in India is available in the public search of trademarks, whether it is registered or yet to be (while it is in process).

The search platform currently allows for three types of searches:

1. Wordmark- Wordmark search provides the data with the trademarks that use same word as that of the query entered with three options i.e., Start with, Contains and Match with.

2. Phonetic- Phonetic based search provides data that have the similar sounding trademarks with the one entered.

3. Vienna code- when the trademark application contains with visual elements, it becomes difficult to search. India is a member country to Vienna Convention, also follows the International classification of the figurative elements in a trademark. Therefore, the Vienna code is applied while checking marks which have visual elements of logo.

The Ministry of Corporate Affairs maintains the record of all incorporated organisations. Thus, one can check for availability of tradename by entering the desired name along with the category of trade in which it is supposed to be used for.

The search result gives the list of incorporated companies with the similar names, if there are any. Having a conflicting name is always a threat for the company. The MCA portal provides an easy search option and also to enter multiple keywords simultaneously to view results in a single interface.

Protecting the brand name outside India implies that the company is expanding the export sales of that trademark. As trademark protection is territorial in nature, it is protected within the territory of a country or group of countries. To be able to protect it in countries where it is not registered, one must follow the same procedure in order to obtain the registration like it is followed in India. To avoid these multiple registrations and make it cost-effective, the trademarks can be managed by making use of the Madrid Protocol, an International Treaty that India joined in 2013.

Madrid has a feature to search for similar trademarks, just like India portal for searching similar trademark. The Madrid has TMview, an online trade mark information platform built by 51 Trade Mark Offices from around the world (including India’s TM Registry). TMview aims to make the trademarks data widely available and easily accessible to the public, free of charge.

TMview currently allows for three types of marks that contains:

  • Word
  • Begins with
  • Ends with
  • Fuzzy search
  • Is

The website also provides to upload the image of the logo in prescribed format for the trademark search.

The WIPO (World Intellectual Property Organisation) has launched a “GLOBAL BRAND DATABASE” tool to search for existing, identical or similar trademarks in the targeted markets one seeking to register with help of this tool.

The highlighting feature is that, it has over 36 million trademarks from 40 databases (including those registered through the Madrid System). There are 14 data-field search option, including image search and automatic search suggestion.

It also has the option to filter the search by Status, origin, application year, expiration, registration year, image classification, holder etc.

Lastly, trademark law recognises prior usage of a trademark even if the mark is not       registered with the Trade Mark Registry. Therefor it is recommended to search for older marks that have been removed or not filed for registration. This can be done through various search engines like Google, Bing, Yahoo! etc or business directories such as yellow pages. If one is looking to register the trademark under certain class of goods/services in a particular country the regional laws and their search engines must be accessed.

These are preliminary checks before you take up the next big step for your company but not substitute for legal advice. If you have any questions or require assistance with trademark searching, please feel free to contact us.

Author: Sneha V Kopparad

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