Trademark Availability Search

1. What is a trademark search? 
A trademark search is a checking for existing marks from various resources including trademark office databases and commercial resources. It is required to determine whether a trademark is fulfilling the criteria of registrable trademarks under trademark acts and available for use without risk of infringement of the rights of a prior user or registered owner. 

2. Why a trademark search should be performed
Firstly, trademark search is performed to determine the use of proposed trademark would not infringe the rights of other registered owner, in order to minimize the risk of any challenge or lawsuit from the owner of prior rights in a trademark or trade name.

 

Secondly, trademark search is conducted to determine registrability of your mark by checking whether there are previous applications or registrations that may obstruct proposed trademark application. By performing searches, in the long term, it will help to avoid costs required to overcome objections to the trademark application or involve in legal proceedings. 

Evaluating the registrability and availability to use a mark will able to determine the distinctiveness and the commercial environment surrounding a proposed trademark. The more distinctive the mark, the stronger the mark will be and the easier the trademark will be registered and to assert and defend against other trademarks. 

 

Before filing a trade mark application, it is necessary to check whether the proposed trademark does not infringe third party rights. If not, an opposition could be filed at the trademark office against your trademark application and it could be cancelled. Your trademark registration could also be challenged by cease-and-desist orders or actions brought before the civil courts.

3. How is a trademark search performed? 
A trademark search normally begins by reviewing of trademarks recorded on the trademark registrar for the particular country. The search will identify marks that are visually, phonetically, or conceptually the same as, or similar to, the proposed trademark under the same or similar goods or services. 


Furthermore, because trademark rights in particular countries are established by first use a mark commercially, regardless of whether the mark has been registered. Sometimes, it may be necessary to conduct a comprehensive search that will cover additional commercial resources, such as the following:  
    a. Business databases; 
    b. Trade directories; 
    c. Domain name registry

    d. The Internet, including databases such as google.com, yahoo.com, and social networking websites; 
    e. Financial status checks; and/or 
    f. Discreet market investigations.


4. What factors should be considered when performing a trademark search? 
All or a combination of the following factors may be taken into consideration when conducting a search: 
    a. The nature of the proposed trademark. Is it a word, a logo, in stylized font, or a combination of features? 
    b. The meaning of the proposed trademark and, if applicable, its translation into local language.

    It is crucial to dertermine if the trademark has any adverse meaning in the local language or if the translation could 

    constitute a term that is generic, descriptive, misdescriptive, or deceptively misdescriptive.  
    c. If the mark includes an acronym, what the acronym stands for. 
    d. Examples of the way in which the trademark will be used. 
    e. A complete list of goods or services on or in connection with which the trademark will be used. 


5. What can be done if the search results are adverse? 
Filing an application for registration of a trademark that is too similar to a previously registered trademark or previously filed application may cause the application being rejected or an opposition filed to prevent registration of the mark. Using a trademark which is confusingly similar to other trademarks can result in a trademark infringement lawsuit, passing off, or another trademark-related claim.

 

It would be necessary to abandon plans for the preferred mark and choose an alternative. Before abandoned the preferred mark, investigations could be conducted to analyze whether any prior mark posing an block is vulnerable to cancellation for lack of use or other reasons. Negotiations to acquire voluntary cancellation of the mark, a transfer of the mark, consent to use or registration of the mark, or a license to use the mark may also be possible.

For trademark registration in Malaysia, please visit trademark registration in Malaysia

 

For trademark registration in overseas countries, please visit oveaseas trademark registration

Contact us to know more about the procedures to register your brand.