Trademarks are the most important asset for your business. Trademark is the company’s goodwill and its reputation. A good trademark distinguishes the brand from the competition and helps you stand out in a crowd. A poor trademark will blunt your marketing effort and might even entangle you in legal disputes. Selecting a good, distinctive and legally strong mark is the first step in building your brand strong.
A self-search or attorney-based search is always a question, up for debate. Let’s discuss this further in the article.
There are many reasons to conduct a search for a potential trademark, but the two most significant are to better ensure the availability of the registration of the mark before adoption and to help avoid unintended infringement of another’s mark. In addition, a worldwide trademark search is often helpful to ensure that a mark is available for use as a domain name when a company’s website is intended to have broad, international exposure.
Trademark search
In most instances, trademark search is an important first step in any trademark registration or brand launch strategy, as it enables companies to avoid adopting marks that infringe third-party trademark rights. The attempted registration of such names can be costly and time-consuming, as it will invariably result in the other party raising an opposition to the chosen mark. If the opposition occurs after the ‘new’ mark has been put into use, production processes may need to be halted, products recalled, advertising campaigns canceled, and new branding developed and launched at short notice, all of which have considerable cost implications.
Types of Trademark Searches
- Clearance Search – It is a comprehensive search conducted for marks that are not only identical but also might be considered deceptively similar to the mark in question. This type of search, as the name suggests, ensure that there is absolute ‘clearance’ before the said trademark can be applied.
- Knockout Search – It is a type of search conducted to knock out the marks, which are identical or pose an imminent threat to the mark to be applied owing to its very close resemblance. It is a search where the purpose is to find out if there is any apparent and most likely hassle to the mark to be applied.
- INN Search – INN stands for International Non-Proprietary Names. These are the names that cannot be appropriated or owned by any person. Hence the INNs are not allowed to be owned or applied for by any specific entity, and no term deceptively similar to the INN can be owned by any entity either; for instance, paracetamol.
- Domain Name Search – A domain name is the face of every business and getting a .com extension of your brand is crucial. It depends on a variety of factors as to how the trademark is to be used. The non-availability of a domain name of the selected trademark is a vital factor to be considered while clearing the trademark for registration.
Purpose of Conducting trademark search before registering
- Analysing Availability – Analysing a trademark search involves spotting the potential conflicts your application and use of your trademark could encounter. The strongest potential conflicts occur between similar marks that are used in commerce on the same or similar goods.
- Assessing Protectability – If similar marks are registered successfully, it may be the case that your trademark has a high chance of success as well. It could also suggest that your trademark is weak because of the popularity of similar trademarks.
- Analysing Potential Conflicts – If potential conflicts are spotted in the trademark search, it needs to be checked whether the prior user of the potentially conflicting trademark has grounds to object to the registration of your trademark. If yes, then the risk needs to be assessed.
Legal consequences of not conducting a search
- Injunction/ stay against the use of the trademark,
- Claim for damages,
- Accounts and handing over of profits,
- Appointment of the local commissioner by the court for custody/ sealing of infringing material/accounts
- An application under Order 39 Rule 1 and 2 of the Civil Procedure Code granted temporary/ ad interim ex-parte injunction
- Penalties under S.103 & S.104 of Act
- Search & Seizure under S.115 of the Act.
Financial consequences of not conducting a search
- Business profit loss
- Damages payment
- Infringed articles
- Goodwill loss
- Amount paid for promotion
- Litigation expenses
Reviewing search results
A search could bring up a number of matches and understanding the trademark search status is essential for interpreting the implications. If, a trademark search returns “no matches found” then there are no registered or applied trademarks that match the query. Further, search of the trademark database for the same query with a different match type or a modified query is then recommended. There are other factors which need to be considered while reviewing or modifying the search query such as phonetics of the mark.
Clearance opinion
Clearance opinion is meant to identify relevant risks and potential solutions to trademark needs.
Purpose of obtaining clearance opinion
- A properly conducted Clearance Opinion can be used in many jurisdictions to show the good faith of the party adopting the mark and,
- This can then be used to limit potential liability and potentially reduce the chance a court will become confused between the marks of two different businesses.
Who issues it-
Trademark Attorney, to confirm that new trademark has been cleared and no similar trademark exists.
Significance of clearance opinion
- That whether the mark can be registered under the trademark act or not
- whether it’s infringing any other trademark or not,
- Projecting risk of Trademark,
Importance of working with a trademark attorney
- Efficient results
- Detailed clearance opinion
- Quick results of Trademark search
- Experienced practical impact on Trademark search
- Non-time consuming
Conclusion
Failure to conduct a trademark search can become challenging for businesses and later it ends up facing Trademark Infringement or opposition. Even if the alleged violation is unintentional, a business can face lawsuits and cease and desist orders. A trademark clearance search may significantly reduce the possibility of the company receiving a demand or legal action from an earlier rights holder claiming infringement of his trademark by identifying such risks upfront in terms of any pre-existing identical or confusingly similar trademarks. So, conducting trademark search is necessary and for that you need an efficient trademark attorney.
The search with the help of trademark attorney proves to be more beneficial as the attorney removes all doubt around the usage of a trademark, increase the chances of trademark registration approval and protect business from infringement suits.
We at KAnalysis provides you each and every service related to IPR to save you from any legal proceeding.
