INTRODUCTION
Trademarks are what distinguish a brand from the rest and make it easily identifiable and recognisable in the market. Often constituting a major monetary asset, a strong trademark also serves as a profitable tool for marketing for brands. With the increase in commerce and new entrants in the market every day, how can an entity ensure that its trademark is strong enough to be different from the other trademarks? Before venturing into a business, and especially before registering its trademark, each firm must search the market for similar trademarks, so that it adapts and registers a mark that would be profitable for it, in terms of brand recognition, brand value and a reduced risk of infringement litigation.
Why Trademark search is important?
- A trademark search will help to avoid the risk and cost of litigation for a trademark infringement suit from a holder of a similar registered trademark or well-known mark.
- It helps to search for trademarks that already exist so that applicant may develop a trademark that would stand-out from the rest, thereby avoiding the risk of being confused with another trademark.
- It helps to search for trademarks that already exist so that applicant may develop a trademark that would stand-out from the rest, thereby avoiding the risk of being confused with another trademark.
- A preliminary trademark search would make the registration process quicker, as it reduces the chance of application being rejected or opposed by the Registry or third- parties.
- More than anything, trademark search will help the applicant to adopt a stronger trademark.
Kinds of searches
There are three basic trademark searches that may be conducted:
Wordmark search – It is conducted to check for trademarks with similar words, names or letters as that of applicant’s trademark.
Vienna Code search – It is conducted for a figurative mark, i.e. a mark consisting of certain figures or devices such as shapes, colours or images, or a combination thereof. The aim of conducting a Vienna search is to look for artistic similarities between mark in question and other trademarks.
Phonetic search – It is done to check whether wordmark in question sounds similar to another wordmark.
Process of Search
A trademark search can be done online through the IP India website – www.ipindia.nic.in
Follow the following steps to conduct a public search:
FAQS
A trademark public search though not mandatory is highly recommended before applying for the registration of trademark.
It is not mandatory to conduct a trademark search as per law. However, the Registry may object to the application if at the stage of examination, it finds a trademark that has already been registered or has been applied for earlier, similar or identical to the mark you have applied for. Therefore, it is always advised to conduct a preliminary public search.
Conducting a trademark has many benefits. it helps to identify trademarks that are already registered and in use, avoid adopting and applying for a weak mark that could be at a risk of getting rejected by the Registry or opposed by third parties, and avoid the risk of being sued for infringement of a similar mark.
Yes. For a logo mark, Vienna search may be conducted. If the logo consists of a word or letter, it is imperative to conduct search of a word mark as well.
There are three types of trademark searches: (i) Word search, (ii) Vienna search, and (iii) Phonetic search.
A Vienna code search can be conducted on www.ipindia.nic.in. Applicant would have to refer the Vienna Code Classification for the figurative elements of the trade mark, such as shapes, colours, devices etc. Then refer the Nice Classification to identify the class of the goods and services. Enter the data in the respective fields, and conduct the search.
Example: A logo for a hospital consists of a globe with horizontal line with a cross on it.
For the globe and the cross, applicant would have to refer to the relevant Vienna categories which would be Category 1.5.12 and Category 24. 13.24. Since the logo would be used for hospital services, Class 44 of the Nice Classification would be applicable.
To conduct a word mark search, applicant needs to enter the word mark and the Nice classification of the goods or services.
A phonetic mark search is similar to a wordmark search but is done to find trademarks that are phonetically match the trademark in question.
The trademark database on www.ipindia.nic.in provides with information on trademarks that have been registered or have been applied for registration. However, before registering the trademark applicant must be wary of well-known marks. Well-known marks are given trademark protection irrespective of the fact that they are registered or not. The Registry maintains a register of recognised well-known marks, which can be accessed on the www.ipindia.nic.in website.
An international trademark search can be conducted through various portals depending on the jurisdiction in which applicant want to register the mark in.
To register the trademark in various jurisdictions, applicant can access the WIPO Global Brand Database or the Madrid Monitor. To register the mark in the European Union (EU) applicant must conduct search on eSearch Plus. If applicant want to register the trademark in another country, he must visit the official webpage of the its IP Office.