5 REASONS FOR PRIOR SEARCH BEFORE TRADEMARK APPLICATION
A couple of days ago I received a phone call from an Entrepreneur who wishes to register his Trademark (TM) in European Union. He mentioned he has already consulted and visited webpages of all relevant Intellectual Property Offices in EU and is generally informed about the entire procedure (in my vocabulary: Well informed – user (probably having legal background).
However, he could not fully understand what the added value of a prior trademark search is and why should anyone bother with it - "The Office does it for you anyway, right?" was his interpretation of the gathered information. Ammm, sorry... The Office DOES NOT do this for you. Well, they do (some of them), but this will cost you some extra money.
1. Reduces risk of opposition
I suppose some of you already have some experiences of applying for your own trademarks. You applied electronically or in paper, paid the official fees, etc. Then, just as the opposition period is coming to an end, you get a warning letter from an attorney, saying: "You can avoid opposition against your trademark if you withdraw your application. Prior search of existing trademarks (or patents for that matter) will not solve the problem of oppositions altogether, however it may reduce the risk of receiving one in the first place. It also gives you a chance to re-think or redesign your trademark before you go ahead and spend your valuable money.
2. Helps to avoid unnecessary costs with your trademark registration
It is not uncommon scenario, that owners file trademark applications themselves without a professional help of an Attorney or an Agent. But they are surprised however when they receive the response from the Office claiming that their trademark does not even meet absolute grounds for protection. If you really, really like your trademark and do not wish to leave it unprotected, trademark professional is (normally) the one who try to save (what can be saved) your trademark to go through the registration procedure. And their (our) time costs money. Therefore, make sure that prior search of similar trademarks should also include some sort of pre-Absolute grounds check.
3. How often are you planning to change your Corporate identity?
There are number of creative executives, agencies and marketing gurus out there today, that can prepare and design you perfect and excellent logos, brands, designs (whatever you want to call them). But just imagine how frustrating and expensive it may be, that you are forced to change your corporate identity due to negative outcome of opposition dispute, which began because someone failed to do prior search for your trademark.
We can only guess what kind of figures were involved with (for example) renaming the Microsoft's operating system from METRO to WINDOWS 8. When Microsoft was aiming to launch its Windows METRO, employees failed to conduct prior trademark search which resulted in abandoning the word altogether and switched it back to WINDOWS 8. See further info here.
4. Freely accessible Trademark databases
We live in an information society, where internet provides huge amounts of information, also such kinds that, at first glance, do not really matter. I am talking about free of charge databases where you can check (with couple of clicks) which trademarks, patents or designs are already registered and where. Also, if you are slightly more creative and open-minded then the rest, you can (just by looking at these databases) see what your competitors are up to and who are the global trend-setters in your field.
5. Valuable source of new ideas
Prior search can be used with your Trademark registration as well as searching for new technologies (state of art) or with searching for new designs. So, the next time you are struggling with "lack of ideas" on how to design a perfect logo/trademark/brand, you can simply visit the above-mentioned database and LET YOUR IMAGINATION GO WILD. Only make sure that your newly designed trademark will not be anything like the ones you find in these databases. »How much do I need to change it? « you will (probably) ask…
The topic related to similarities between individual brands and the conditions that are applied in case of such disputes is the entirely different post that will follow shortly...Stay tuned.