Availability and prior art searches

Why is it necessary to check the availability of the trademark you are considering filing?

A trademark application must not infringe on any earlier rights held by third parties, i.e. created, recorded or used (as appropriate) BEFORE the date of your trademark application. If this is the case, these third parties have in principle the right toattack your brand before a trademark office (INPI in France) by means of an opposition (in this case you only risk losing your trademark) or in court through an action for infringement, unfair competition and/or nullity.

The consequences of a lawsuit against you are often cumbersome:

• Destruction of products
• Destruction of communication supports (business cards, brochures, flyers...)
• Closing of the website
• Damages for the benefit of the adversary
• Prison sentence and fine in favour of the State in the event of criminal action (in France, trademark counterfeiting carries penalties of up to 4 years in prison and a €400,000 fine)

In order to avoid this risk, it is imperative to carry out availability searches (also called prior art searches) to ensure that the trademark is not already taken by a third party.

This is done by 2 levels of research among the most common prior enforceable rights.

What prior rights are enforceable against your proposed trademark?

Here is the list given by the intellectual property code (article L.711-4):

1. Has an earlier registered or well-known mark (...)
2. Has a name or company name (...)
3. Has a trade name or sign known throughout the national territory (...)
4. A protected designation of origin or geographical indication ;
5. Copyright;
6. Rights resulting from a protected design ;
7. The right to the personality of a third party, in particular to his surname, pseudonym or image;
8. In the name, image or reputation of a local authority.

Certain earlier rights such as copyright or personality rights do not have the same status as the rights of the individual. no record for research purposes. So we don't need research in these areas.

Furthermore, it is very rare for a proposed trademark to conflict with appellations of origin, names of local authorities or designs. Searches can be extended to these rights when there is real doubt about them.

Searches are usually limited to the following prior rights:

• Previous brands valid in the territory you are interested in (for example, if you wish to register a trademark in France, you can limit the searches to trademarks having effect in France: a German trademark is not enforceable against you)
• Corporate and business names
• Domain Names

The principle of speciality

The principle of speciality limits the possibilities of conflict between two identical or closely related trademarks: for a trademark to be opposable to an identical or closely related trademark, it must target identical or similar products/services.

Remember that you always need a danger of confusion in the spirit of the public. However, it is considered that two identical or very similar marks for very different products do not create any doubt in the mind of the public that the products emanate from two separate undertakings.

Example: the CORONA brand is a paint brand but also a beer brand. The public will not be mistaken because the products are very different: it is obvious that they come from two different companies.

The two levels of research

Important The following advice is given for a French brand project.

The identical search

This is a primary filter that is carried out to ensure that there is noclosely-related impediment to your project.

The search is carried out among identical trademarks, identical company names and identical domain names.

In all cases the principle of speciality is applied: if the prior rights identified are identical to your trademark project but are filed/registered/reserved/used for an activity totally different from yours, they can't be opposed to you.

As far as domain names are concerned: if they are not not yet exploited at all (they lead to a parking page for example), they are not opposable to you.

In-depth research, or the search for similarities

Once the identical research has been carried out and possible obstacles have been removed, i.e. they do not pose a danger to your project, it is strongly advised to do a thorough search.

In-depth research, or searching for similarities, is aimed at controlling the prior rights only close of your project. For example, your branding project is GRINGO. The similarity search will reveal trademarks close to GRINGO, for example GRINGA, GRINGUETTE, PRIGO.... The same goes for company names and domain names. Indeed, in order to proceed with the search, an algorithm turns the letters in all directions, adding and removing letters, in order to find all prior rights that could potentially be opposed to you.

This research should also be conducted among classes containing goods and services that can be considered as similar or complementary of those you're considering depositing.

It can be ordered from the INPI, but the INPI will only give no legal advice on the results. It is therefore necessary to analyze each earlier trademark found (there are approximately 1600 per search) and determine the risks it represents for your project, using a precise legal analysis method.

The method for analyzing similarity search results

The application of this method requires a good field experience, as well as a precise knowledge of the uses for comparing signs, and of the rules of similarity and complementarity among products and services. This is why in-depth research is only of real interest if it is carried out by a specialized professional.

Comparison of products and services

Products and services may be identical, similar or complementary.

The fact that they belong to the same person is not enough to make them identical. You have to dig deeper into the nature of each product or service.

Example: in class 9, we find DVDs, sunglasses, fire extinguishers and batteries. None of these products are considered similar even though they belong to the same class.

Similar products and services share a common nature, function and/or purpose.

For example: Metallic building materials in Class 6 and non-metallic building materials in Class 19 are similar in that they have a function (they are used to construct a building) and a common purpose (a construction site).

Complementarity, on the other hand, occurs when products or services are directly related to each other, are necessary to each other.

For example: A computer in class 9 and a computer mouse (also class 9) are complementary for obvious reasons. As stated above, the fact that they belong to the same class is not sufficient to make them identical. In the present case the goods are not identical, it is therefore necessary to argue similarity or, as here, complementarity.

Note that a product can be quite similar or complementary to a service and vice versa.

For example: Class 16 instructional instruments are complementary to class 41 instruction and teaching services, since the former are essential for the latter to be carried out properly.

NB: As part of a opposition (see our fact sheet on this subject)In order to do this, you will need to compare the marks using exactly the same technique.

Comparison of signs

The visual comparison

The aim is to compare brands according to their visual appearance.

In the GRINGO example, the GRINGA brand is visually close because only one letter changes.

Phonetic comparison

The aim is to compare the phonetic impact of the brands involved.

Example: GRINGO is very close to GRINGA phonetically, only one sound changes.

Intellectual comparison

It is a matter of comparing the meaning of the marks involved.

Example: GRINGO and GRINGA have an almost identical meaning, the first being the masculine and the second the feminine of the same word.

Synthesis: analysis of the risk of confusion

By cross-referencing the results of the comparison of the signs and the comparison of the goods and services, it is possible to determine the likelihood of confusion for the average consumer. The similarities on the one hand and the differences on the other must be balanced in order to draw conclusions as to the risk actually incurred in registering the mark despite the existence of such anteriority.

Limitations of the searches

Whether you do an identical search, a thorough search, or both, you will never be able to access all of the prior rights that are enforceable. That is why they say that searches are limited. Indeed, you will not be able to know, on the day of the search:

• Brands under priority timeframe  in another country (i.e. which have been filed for less than 6 months in another country, and whose holder may decide soon to extend it to France by benefiting from the anteriority of its foreign filing date).
• Brands that have just been dropped off that have not yet been published.
• Company names that have been filed at the Registry but not yet worn on the Infogreffe or Societe.com databases.
• Domain names that have been recently reserved and that do not yet stand out on whois bases.

You can always, 6 months after your deposit, make a control research to ensure that these "hidden" rights do not hinder your project. However, this is very rare in practice.