Trade mark search: How to proceed step by step

Before a trade mark application is filed in Germany or the EU, the most important step must be taken: a trade mark search. This is to prevent an identical or similar trade mark already being protected in Germany or abroad, which could stand in the way of a successful application. As experienced attorneys in trade mark law, we recommend investing in a detailed legal examination of your trade mark. In this article you can find out how a trade mark search works and what you should meanwhile bear in mind.

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What is a trade mark search?

Anyone wishing to register a trade mark, regardless of the country in which it is registered, must first ensure that no other existing trade mark conflicts with their own. The main reason for this is that many trade mark offices only check the formal grounds for refusal - but not whether an existing trade mark is identical or similar to the new trade mark. As a founder and entrepreneur, you therefore run the risk of the trade mark application being rejected or cancelled and, in the worst case, of claims for damages and injunctive relief against the existing trade mark.

To prevent this, a trade mark search is an important aspect before the actual trade mark application and trade mark use. The trade mark search checks whether any trade marks have already been registered that could conflict with your trade mark. If a so-called trade mark collision is identified prior to registration, the costs incurred and possible reputational damage can be prevented from the beginning.

By the way, the same applies to registered designs. These are also usually registered by the offices without examination, so it is advisable to check carefully whether your design is new and has individual character. Such a search can and is often combined with an FTO search ("freedom-to-operate" search). This involves identifying property rights that are relevant for the technical realisation and commercial implementation of your own product.

How do I carry out a trade mark search?

Before a trade mark is registered nationally or internationally, a number of steps must be taken to ensure that the trade mark is eligible for protection. An intensive trade mark search can significantly shorten the registration process and save unnecessary costs.

DPMA: German Patent and Trade Mark Office

The first step from a German perspective is to check the database of the German Patent and Trade Mark Office (DPMA). The trade mark search is carried out via the so-called DPMAregister. This register includes not only German trade marks, but also those registered in the EU.

International trade marks (also known as international registrations) with protective effect within Germany can also be found in the German trade mark register. However, not all internationally protected trade marks also extend their protection to Germany, which is why a look at international registers is particularly important for international applications.

European trade mark search via the EUIPO

If you want your trade mark to be protected in individual or all EU countries, a search at the European Union Intellectual Property Office (EUIPO) is necessary. The relevant databases here are TMview and eSearch.

Although the DPMA database can often also be used for this purpose, as EU trade marks are also valid in Germany, a comprehensive and professional trade mark search requires a check of all potentially relevant databases.

Important to know: The EUIPO does not check similarities to other registered trade marks before a trade mark application is filed. Therefore, a trade mark search is also recommended in this case if the protection of an EU trade mark is desired.

Trade mark search for applications in Europe - what you should bear in mind

If you are a high-revenue company or newly founded start-up planning to expand in the near or distant future, a trade mark search throughout the EU can be useful, even if only a German trademark is to be registered initially. This way, you can ensure that your trade mark is also protected in all other EU countries. You also avoid the risk of having to change the trade mark again if you expand, as this could infringe third-party trade mark rights.

It may also make sense to apply directly for an EU trade mark instead of "just" a German trade mark. However, an EU trade mark search is more complex and therefore more expensive. However, this can be worthwhile in any case, because only an EU search also lists national trade marks from other EU-countries (whereas a DPMA search only lists EU trade marks and German trade marks). In the long term, this can result in significantly higher costs if an EU application for your trade mark fails for lack of a search.

International trade mark search for companies and start-ups

Of course, a trade mark can also be registered internationally - even in individual countries. An international trade mark application should also include an international trade mark search in the WIPO ("World Intellectual Property Organisation") databases. The Madrid Monitor and Global Brand Database are used for this purpose.

For an international trade mark application, a German or European trade mark is usually first registered as a basic trade mark and then countries are named to which the application should then extend. If this is desired (in the future), it also makes sense here to extend the initial trade mark search not only to Germany or the EU, but also to carry out an international trade mark search.

Please note: Important trading partners such as Norway, the UK or Switzerland are not included in an EU search. An international trade mark search can therefore also be worthwhile for these countries.