Trademark Search: The Basics How To Do A Trademark Search?

AB
Al Bahar & Associates

Contributor

Al Bahar & Associates
A trademark search is a process usually performed by a party interested in registering and using a new trademark or who wants to register the trademark the party is currently using.
United Arab Emirates Intellectual Property
To print this article, all you need is to be registered or login on Mondaq.com.

What is a Trademark Search?

A trademark search is a process usually performed by a party interested in registering and using a new trademark or who wants to register the trademark the party is currently using.

Why do you do a Trademark Search?

The search aims to determine whether there

  • are any similar existing trademarks already in use
  • are any similar trademarks registered by the trademark owners
  • are any trademarks that may be confusingly similar to the new brand or
  • are used on similar goods or services under the Class of the proposed mark.

If there are, usage of the new trademark and registration may be refused to prevent confusion.

Thus, the TM search will ensure lesser complexities in the trademark registration process.

In addition to that, a thorough trademark search prevents you from legal issues involving trademark violation in the long run.

When should you conduct a Trademark Search?

As explained above, the trademark search should preferably be conducted before using the trademark.

However, it is not uncommon to encounter situations where the parties proceed with trademark registration after using the same for a considerable time.

And also, some businesses conduct a trademark search to ensure that no other business uses their trademark or any similar mark. However, they do not proceed with the trademark registration.

Nonetheless, ideally, a trademark search is conducted before registering a new trademark.

How to conduct a Trademark Search?

There could be different ways to conduct a TM search besides what is provided here. For example, there are many paid databases & tools (country or regionally-specific). However, in this article, we focus on conducting the search merely based on official sources and other general resources available for the purpose.

Probably the future of a brand is in your hand, and remember, prevention is actually way better than the cure!

There are 4 key steps to ensure you have covered all the bases in your trademark search.

4 Steps to follow to do the trademark search

1. Identify

Identify: The Proposed trademark

As basic as it sounds, it is crucial that you are fully aware of the products and services offered by the mark on which you are about to conduct a trademark search. This will widen your search and decide the direction of your registration.

Study the mark: try to establish the scope and nature. (Design, words, letters, colours, sound, patterns etc.)

The better you understand the mark, the better you can search for marks that bear resemblance or could cause confusion)

Identify: The Class

It is vital to understand the classification under which your trademark is categorised.

The most commonly used classification is the NICE CLASSIFICATION to register trademarks.

You must accurately identify the classes related to the goods or services offered under the proposed trademark.

Why do you have to select a class or classes?

The trademark will be protected only in the class it is registered. You can register the trademark in several classes. The number of classes in which you are going to register the trademark will depend on the number of goods or services you offer/intend to offer under the trademark.

E.g.:

The brand QPR sells hot water bottles and offers electrical item repair services.

So the proposed trademark of QPR must come under Class 11 (hot water bottles) and Class 37 (repairs).

However, if you only conducted the search and registered the trademark under Class 11, the services offered by QPR under Class 37 will not be protected by the registration.

Identify the Jurisdiction

Trademark laws differ from state to state and country to country. Identify the jurisdiction on which you are going to conduct the trademark search and ensure that you are updated on the relevant laws of that particular jurisdiction.

If you want to register a trademark internationally, you must follow the Madrid System. The relevant authority for the purpose is World Intellectual Property Organization.

Identify: The Sources

In the majority of regions/countries/states, you can conduct a trademark search through the official database of the trademark office/intellectual property office of the particular region/country/state.

However, this may not be the case always.

Important to know:

  • Some countries do not have freely available official databases to conduct searches. You must pay the prescribed fee first to get the search done.

i.e., UAE :

  • Some countries do not have official online databases. In this case, you have to request the relevant authority/authorised persons or entities to search on behalf of the proposed trademark.

i.e., Qatar

Examples of Relevant Authorities and Official Trademark Search Databases

Country/Region

Office

Link

US

United States Patent and Trademark Office (USPTO)

URL

UK


Intellectual Property Office

URL

Singapore

Intellectual Property Office of Singapore (IPOS)

URL

European Union


European Union Intellectual Property Office

URL (European Union trade marks and registered Community designs)

URL (information from all of the EU national IP offices, the European Intellectual Property Office (EUIPO) and several international partner offices outside the EU on trade mark applications and registered marks)

India

Office of the Controller General of Patents, Designs and Trade Marks
Department for Promotion of Industry and Internal Trade
Ministry of Commerce and Industry

URL

UAE

Trademark & Intellectual Works Department
Ministry of Economy

URL (paid service)

International Database

World Intellectual Property Organisation

URL

2. Customise and narrow down your search

  • You can specify your search for the relevant Classes at the start. That will help you narrow down the amount of data that you have to go through.
  • Official databases provide different options to customise your search.

i.e., filters such as; 'contains', 'begins with', 'similarity', etc.

These options help you narrow down the search and focus on specifics relevant to the goods and services the trademark represents.

  • You must be careful not to overly narrow down the details that might cause you to miss out on important information.

3. Common Law Search

In some jurisdictions (e.g., US, UK, India), unregistered trademarks are protected under the Common Law. Therefore, if you are conducting a trademark search for a jurisdiction that does not require registration, it is strongly advised to conduct a Common Law Search in order to rule out any unregistered trademarks in use that could cause confusion to the proposed trademark.

Common Law Search is usually done by running the proposed mark through various resources available such as included but not limited to;

  • Registries
  • News
  • Financial sources
  • Internet Search

Simply put, in the Common Law Search, you could use a wide variety of sources available (both online and offline) that you could speculate as a potential source to discover any relevant information to your search.

4. Record your findings

Follow the steps. Conduct the trademark search. This will take time.

Make sure that you record your findings in a proper and structured manner.

Trademark lawyers use trademark search reports for this purpose.

Conclusion

This article simplifies and lays out the basic introduction to the trademark search and the key steps to follow to do a trademark search as follows:

  • What is a Trademark Search? – Why? When? How?
  • 4 Steps to follow to do a trademark search
    • Identify – Trademark, Class, Jurisdiction, Sources
    • Customise & narrow down
    • Common Law search
    • Record

Our Expertise

The legal talent of Al Bahar & Associates combines legal expertise in Civil and Common Law systems. It has allowed us to expand the scope of our services to other Courts and Tribunals in the UAE, such as the DIFC and DIAC.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

See More Popular Content From

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More