Trademark availability and prior art searches
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 this is not the case, the trademark may be challenged during the registration procedure or later: checking its availability is therefore of paramount importance.
What is trademark availability research 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 imprisonment for counterfeiting and the payment of damages. For example, a trademark counterfeiting in France is punishable by four years imprisonment and a fine of 400,000 euros.
The list of prior rights opposable to a proposed identical or similar mark is given by Article L.711-4 of the French 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 ;
- 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 are enforceable, only three of them are generally a source of dispute: trademarks, company and trade names, and domain names.
Trademark clearance search
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 filing deed, and will only be protected for the latter. Detail is of utmost importance in the context of a prior art search. Two identical trademarks may coexist as long as they do not refer to the same types of goods or services and there is no likelihood of confusion in the mind of the public. As an example, the following marks may be cited:
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 is a basic search, which consists of checking that no strictly identical trademark already exists. The search also extends to identical domain names and company names. These three types of opposable rights are recorded in registers, which is why the search is carried out online.
The INPI has a trademark search service, also known as the "Trademark Database". It provides free access to bibliographic and legal information and to the logos of French, Community and international trademarks: approximately 3,000,000 trademarks are listed, with an update every Friday.
The search for similarities
Identical research cannot be sufficient on its own: it must be supplemented by a more in-depth research, known as "similarity" research. Even if the first step has not revealed a strictly identical mark, the risk of confusion in the public mind may be caused by a mark that is too close to its design. It will then constitute an opposable anteriority.
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.
This analysis is then completed 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 using the Nice Classification. The latter greatly facilitates the search for availability. Please note, however, that goods and services belonging to the same class are not necessarily identical or similar. Conversely, there may be similarity or complementarity between goods and services in 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.
The products and/or services may therefore be similar or complementary. Similar products share the same nature or purpose. Complementarity occurs when they are necessary to each other, as a mouse can be to a computer: these products are not identical but can be considered 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.