EUIPO trademark search: What matters
The trademark search is a crucial step before applying for a trade mark and therefore a central component of the trade mark application process, especially if the application is to be filed at European level via the European Intellectual Property Office (EUIPO).
A thorough search can not only help to increase the likelihood of a successful trade mark application, but also to avoid legal disputes due to trade mark infringements later on. In this article, we explain the key aspects of the EU-wide trade mark search (hereinafter also referred to as "EUIPO trademark search"), its importance and how a professional patent law firm can support you in this process.
What is an EUIPO trade mark search?
The EUIPO is responsible for the registration of trade marks and designs with effect for the entire European Union. Registering a trade mark with this office therefore grants uniform protection in all EU member states, in contrast to national trade marks.
A trade mark must not only be distinctive, but must also not conflict with existing trade marks. A thorough trademark search is therefore essential before applying for a trade mark. The purpose of the search is to determine whether similar or identical rights already exist that protect the desired brand name. A thorough search can avoid potential conflicts in advance.
Since the EUIPO itself does not carry out a thorough examination of whether existing trade mark rights of third parties could be infringed during the application procedure, it is crucial to carry out your own trademark search before filing the application in order to avoid subsequent disputes such as oppositions or lawsuits by earlier trade mark owners.
How does the EUIPO trade mark search work?
A thorough EUIPO trade mark search is essential to avoid collisions with existing trade mark rights and to put your application on a solid footing. It goes far beyond the use of publicly available tools such as TMview or eSearch Plus, which only provide initial guidance and which, due to the complexity of the question of when there is a "likelihood of confusion", cannot usually be used to conclusively assess the potential conflict situation. In professional trade mark searches, specialised software tools and legal expertise are used to comprehensively uncover potential conflicts.
In such a search, the first step is to look for existing trade marks that are similar or identical to the planned trade mark in terms of their wording, their figurative representation or their combination of words and images.
The phonological (pronunciation-based), conceptual and visual similarity levels of trade marks are taken into account. This means that brands that use different words or representations but are similar in their sound, concept and appearance are also considered. More on this below.
The search is carried out taking into account the lists of goods and services of the earlier trade marks. Trade marks can only be registered for certain goods and services. It is therefore checked whether the planned trade mark is possibly already registered in a similar area, which could lead to a likelihood of confusion.
You can find out more about the trade mark search process in a separate article.
Conducting an EUIPO trade mark search may seem simple at first glance, but it requires a deep understanding of the legal framework and the detailed functioning of the EUIPO databases. A trade mark lawyer has the necessary expertise and AI-based tools to correctly classify and interpret the results of the search.
What is taken into account in the EUIPO trade mark search?
The EUIPO trade mark search takes into account various factors that play a role in the assessment of trade mark similarities:
- Phonological similarity: This refers to the pronunciation of trade marks. Even if a trade mark looks different on paper, its phonetic similarity to an existing trade mark can lead to confusion.
- Visual similarity: This pertains to the appearance of the trade mark. If signs, colours, or symbols are used that have a high visual resemblance to an already registered trade mark, this can also increase the likelihood of confusion.
- Conceptual similarity: trade marks with similar meanings, word stems, or concepts can also be problematic, even if they differ visually or phonetically.
- List of goods and services: The trade mark search also examines the area in which the trade marks enjoy protection. If the planned trade mark is registered for similar or even identical goods or services, this increases the risk of a collision.
What are the risks without a comprehensive trade mark search?
The EUIPO trade mark search not only serves to identify trade mark similarities but also to avoid legal and financial risks. If a trade mark is applied for without a prior search and it later transpires that it conflicts with an existing trade mark, this can lead to the following consequences, for example:
- Opposition proceedings after registration: Once a trade mark application has been published, owners of earlier trade mark rights have the option of filing an opposition against the application with the EUIPO. Such an opposition is not only cost-intensive but can also result in the trade mark not being registered. This means that the investment in the trade mark application is lost.
- Costs for legal disputes: If the trade mark is nevertheless registered and a conflict later arises (e.g. trade mark infringement or cancellation proceedings), high costs are incurred for the defence of the trade mark.
- Loss of reputation: trade mark infringements can damage a company's reputation and lead to a loss of trust among customers.
To avoid these risks, it is advisable to seek the assistance of an experienced patent or trade mark attorney who will carry out a comprehensive EUIPO trade mark search and assess the results with regard to the protectability of the trade mark.
How can a trade mark attorney assist with a trade mark search?
Conducting a trade mark search is a complex and detailed task that requires expertise and experience. A patent law firm specialising in trade mark law can take over the entire process and ensure that the search is carried out correctly and comprehensively.
The support provided by a patent law firm usually includes the following steps:
- Initial consultation: We help you determine whether a German, European, or international trade mark application makes sense for you and provide comprehensive advice on the options, benefits, and costs.
- Carrying out the search: Our law firm conducts a thorough search in the EUIPO databases as well as in other relevant international and national databases.
- Analysing the results: Based on the search results, the similarity with existing trade marks is assessed, and a well-founded recommendation is made as to whether the application can be filed or whether changes to the trade mark are necessary.
- Advice on the trade mark application: If there are no conflicts, we advise on the correct application of the trade mark and ensure that all necessary forms and documents are completed correctly.
- Representation in the event of oppositions: If an opposition is filed against the application, the law firm also takes over the legal representation and ensures that the trade mark is successfully defended.
Conclusion
A thorough EUIPO trade mark search is an indispensable step in the trade mark application process. It helps to avoid potential conflicts with existing trade marks and protects against legal and financial risks. A professional patent law firm not only offers the necessary expertise but also provides the legal security to make the entire process efficient and successful.
By entrusting an experienced law firm with the trade mark search and registration, you can ensure that your trade mark enjoys the best possible protection from the outset and that legal pitfalls are avoided.