Availability and search for prior art of a trademark
Updated: 12/09/2022
Before filing a trademark for registration, a prior art search must be carried out: to avoid any conflict, the trademark must respect any prior property rights held by third parties. If not, the trademark may be attacked during the registration process or at a later date: checking its availability is therefore of utmost importance.
What is a trademark clearance search and why is it essential?
To register a trademark means for its owner to take possession of an exclusive title of ownership of the trademark in relation to the goods and/or services concerned. It also means that it is possible to oppose the subsequent registration of an identical or overly similar mark, whether it is a word, figurative or semi-figurative mark. If this happens, the prior owner has many avenues available to him to protect its brand. It can indeed initiate a multitude of actions against the new trademark: opposition, infringement action, action for unfair competition or nullity .
The consequences of such legal actions can be considerable, ranging from the destruction of products and communication media to prison sentences for counterfeiting and the payment of damages. For example, trademark infringement in France is punishable by three years imprisonment and a fine of 300,000 euros.
The list of prior rights opposable to a proposed identical or similar mark is given by Article L.711-2 of the Intellectual Property Code. The latter provides that signs which infringe :
- an earlier registered or well-known trademark ;
- Has a name or company name ;
- Has a trade name or sign known throughout the national territory;
- A protected designation of origin or geographical indication ;
- Copyright;
- Rights resulting from a protected design ;
- The right to the personality of a third party, in particular to his surname, pseudonym or image;
- In the name, image or reputation of a local authority.
While there are a number of prior rights that can be enforced, three of them are generally the source of disputes: trademarks, company and trade names, and domain names.
Searching for prior art among trademarks
Before dwelling on the two steps necessary for any good prior art search, it is important to come back to the principle of specialty: a trademark must necessarily be used in connection with the goods and/or services mentioned in the application, and will only be protected for the latter. This detail is very important in the context of a prior art search. Two identical trademarks can coexist as long as they do not concern the same types of goods or services and there is no risk of confusion in the public mind. As an example, we can cite the following trademarks
| Brand 1 | Brand 2 |
|---|---|
 products : beers |  products : paints |
 products : dessert creams |  products : pens |
During the search for prior art, it is therefore necessary to analyse the prior trademarks, bearing in mind the principle of speciality, which makes it possible to rule out certain prior art that is not in fact embarrassing.
The identical search
The first step of a prior art search is a basic search, which consists in checking that no strictly identical trademarks already exist. The search also extends to identical domain names and company names. These three types of enforceable rights are recorded in registers and this is why the search is done online.
In this respect, the INPI has a database that allows for an identical search among trademarks and companies: "Data Inpi. This database gives free access to the data of the National Register of Commerce and Companies (RNCS) as well as to the Trademark Register: about 3,000,000 trademarks are listed, with an update made every Friday.
The search for similarities
The identical search is not sufficient on its own: it must be completed by a more thorough search, known as a "similarity" search. Even if the first step has not revealed a strictly identical mark, the risk of confusion in the public's mind may be created by a mark that is too close to the project. It will then constitute an opposable prior art.
The search for similarities is divided into two phases: the analysis of the sign, and the analysis of products and services.
As regards the analysis of the sign, a visual, phonetic and intellectual comparison is made of each mark identified with the mark under consideration, and it is determined whether there is sufficient proximity to generate a possible likelihood of confusion.
We then complete this analysis by verifying whether the goods and services covered by the two marks being compared are similar or complementary. For greater clarity, the goods and services have been classified into classes by the Nice classification. The latter greatly facilitates the search for prior art. However, beware: goods and services belonging to the same class are not necessarily identical or similar. On the contrary, there may be similarities or complementarities between products and services of different classes. It is therefore advisable to think carefully about the choice of classes before proceeding with the in-depth search. The cost of this search depends on the number of classes selected.
Products and/or services may thus be similar or complementary. Similar products share the same nature or purpose. We speak of complementarity when they are necessary to each other, as can be the case for a mouse to a computer: these products are not identical but can be considered as complementary.
This second step is often complex, which is why it is advisable to call on the services of a professional to look for similarities. The INPI offers to carry out similarity searches for a fee, but no legal advice will be provided with the listing of similar trademarks. This is obtained by means of an algorithm which identifies, within the classes concerned, all similar trade names by adding, inverting or removing characters. The search provides an average of 1,600 results, which is why the skills of a professional are particularly useful in determining whether any of them may constitute a serious obstacle.