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The importance of trademark searching

Although trademark search is not mandatory, but it is recommended to conduct a pre-filing search before filing an application. In most cases, conducting pre-filing trademark searches is an important first step in any trademark registration, as it helps to avoid unintended infringement of third-party trademark rights. By finding out what other trademarks are out there, it allows the applicant to learn if there are any pre-registered or pre-filed marks that are similar or identical to their potential trademarks (which may result in their application being rejected). These searches will help the applicant to avoid wasting time and resources on preparing and filing a trademark application that may not be available for registration.

How to check if your proposed mark is free for registration

Trademark search can simply be done by using an Internet search engine to see if the proposed mark is being used on the Internet. This basic search can provide the applicant with plenty of information concerning the use of the mark in commerce and if the revealed mark (if any) has applied for a similar goods or services. However, such online searches will not identify if the cited marks have already been registered or not. A more focused and formal search in official or purposed-built database that are able to identify such conflict can be performed by intellectual property agencies or trademark attorney, who are able to provide their legal opinion such as ability to register, potential issues, availability and recommendations.

There are three types of searches:-

1.      Word mark search – this is done by searching the word, class and description of goods or services

2.      Device mark search – this is done by searching with Vienna Code and class

3.      Phonetic search – this is done by searching word mark and class and therefore word marks that sound similar

Benefits of conducting trademark search

·         Avoid conflicts with prior trademarks

·         Prevention of spending money and resources on building a trademark that may be forced to drop because a third-party has already registered the mark

·         Avoid exposure to damages and attorney fees from claims or opposition by right owners

·         The search reports and analysis can help the applicant to minimize the likelihood of official refusals or opposition by third parties

·         The search results can help the applicant to minimize the risk of challenges by the prior rights owners of similar trademark revealed in the search

With the above reasons, the applicant should consider performing a trademark search beforehand to prevent the wastage of money, time and resources.

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