Why, when and how to do a thorough brand search?
Why do a thorough search?
Before registering your trademark with the INPIIf the name you have chosen is available, you must check if it is available.. The aim is to ensure that the trademark does not infringe on prior rights. This will allow you to obtain a registration without difficulties, and in particular, without opposition.
But not all research is the same! While an identical search of earlier trademarks is a prerequisite for filing, it is not sufficient in itself. Most of the conflicts arise from trademarks that are only similar. It is therefore necessary to carry out a thorough search.
These searches allow you to know the entire legal environment of a trademark. During an in-depth search, you will highlight all the trademarks that are visually and/or phonetically similar to yours.
When should a similarity search be done?
It is usually necessary to conduct a thorough search before each trademark application. To avoid incurring unnecessary costs, however, it is best to start with an identical search. Thus, if a strictly identical trademark is ever identified in your field of activity, there is probably no point in continuing. It is better to change your name now.
Therefore, it is appropriate to : 1) conduct an identical search and then, in the absence of redhibitory obstacles, 2) conduct a search for similarities. The INPI says it itself: trademark search is a first step. But," the second step, which is highly recommended, consists of ordering from the INPI an in-depth search (search for spelling, phonetic and intellectual similarities) on brand and company names. »
Note also that whether or not a thorough search is necessary depends on the mark itself. In general, a weakly distinctive mark will need less searching than a totally arbitrary mark. In addition, the risk of infringing a third party's rights seems to be higher with an invented/fantasy name than with a common word.
In any case, a thorough research must be conducted before filing the trademark (and, if possible, before any use thereof).
How do I perform an in-depth search among similar trademarks?
For the past few years, the INPI offers the possibility for applicants to order one or more list(s) themselves to ensure the availability of their brand. In this case, after payment of the fees, you will receive within a few days a document of several dozen pages, including a list of several hundred trademarks (generally 1600 trademarks). It will then be necessary to interpret these results.
For this purpose, each brand mentioned should be checked and compared with the brand under consideration. The comparison must relate to the names themselves but also to the goods and services concerned. If this comparison shows that there is a likelihood of confusion between two signs, you are probably faced with an awkward anteriority, which could be opposed to your application.
The difficulty is that the INPI does not provide any legal advice or recommendations with the listing. And interpreting the results is a technical and complex process. That is why it is generally recommended to call in a professional to carry out an in-depth research.
In-depth research is included in our Security package. But if you have already ordered your listing from the INPI and you would like us to analyse it, we can also help you in this process.