MEANING OF TRADEMARK SEARCH

Trademark search  means the action taken to determine the viability and uniqueness of the proposed in comparison to the mark which are already available in the market. Trademark search  in India is conducted before applying a trademark for registration. Trademark search also gives an idea about similar or deceptively similar mark that exists. Trademark search also protect us from adopting a mark which clash with well-known marks or prohibited marks.   The main purpose of trademark search is to identify any prior existing trademarks that may be similar or identical to the proposed trademark and may create a likelihood of confusion among consumers. Trademark searches can be narrow in scope or can include results from every avenue for trademark protection for every mark is remotely similar to the mark that is the subject of the search.   

If two trademarks for two separate companies are too similar, consumers will be confused and not know which goods are from which company. For this reason, there are laws in place that protect registered trademarks from being duplicated and prevent consumer confusion. If a trademark owner would like to register a trademark, they first must search to make sure their design is not too similar to any other company’s trademark.

 

WHAT IS A TRADEMARK ?

Before delving into the topic of trademark search it is crucial to know about the trademark. A Trademark is a word, logo, design, symbol, phrase or a combination of these things that identifies your goods or services. It’s how customers recognize a trader in the marketplace and distinguish you from your competitors. The word “trademark” refers to both trademarks and service marks. A trademark is used for goods, while a service mark is used for services. You become a trademark owner as soon as you start using your trademark with your goods or services. You establish rights in your trademark by using it, but those rights are limited only in the geographical area in which you are providing goods or services. If you want stronger, nationwide rights you need to register your trademark immediately. Every time you use your trademark, you can use a symbol with it. The symbol informs the consumers and competitors about the trademark you claim. The symbol TM can be used for a trademark even if your trademark application is pending. Once you register your trademark you can use the symbol ® with the trademark. The  Trademark registration symbol is generally used by all trademark owners in a superscript or subscript manner to the right of the trademark. 

IMPORTANCE OF TRADEMARK SEARCH

The first and foremost prerequisite before filing a trademark for registration is its search in Intellectual Property portal. The steps basically involves analyzing local and international databases to identify any similar or identical marks that could pose a challenge to the proposed mark.

The purpose of a trademark search is to minimize the risk of rejection/refusal of a trademark application and to avoid any potential conflict that may arise during the process of registration of any trademark, which is deceptively similar and/or identical with the proposed trademark, or if the trademark is already in use or registered by another trademark owner. Failure to do proper trademark search before applying for registration of a trademark can result in hefty legal expenses and have to go through time consuming process to resolve the conflict and overcome the legal procedure during the process of registration.

Another aspect is that trademark search helps to ensure that a business brand is unique and distinct from others in the market which eventually is crucial for brand recognition, establishing a strong brand identity and easy identification of the brand by consumers in the market which enhances goodwill and reputation.

A through trademark search not only minimizes the risk of objections from trademark registry during examination but also provides information to the applicant/business entity about the uniqueness and viability of the proposed trademark.   

Also important to know is trademark class without which trademark search is incomplete. Trademark public  search is to be conducted as per the class as they are classified according to the goods or services in which a trademark is to be registered.

Trademark search ensures not to infringe someone else intellectual property rights. Trademark search eliminates conflicts with similar existing trademarks.  

 

TRADEMARK CLASS

 As per the Nice classifications, there are in total 45 classes.  First classes (1-34) cover goods and rest (35-45) cover services.  For e.g. Tea falls in Class 30, Cement & Plywood in Class 19. Likewise advertising falls in Class 35 and construction falls in Class 37. Trademarks are classified and registered into those classes for which they are intended to be used.

HOW TO CONDUCT TRADEMARK SEARCH IN INDIA

Trademark search in India is generally conducted in the Indian trademark database. Trademark search type is divided into three types: Wordmark, Phonetic and Vienna Code.  

Trademark Search Type	Criteria to be followed
Word mark	Enter word name, class & goods description and click search button
Phonetic	Enter name, class & goods description and click search button
Vienna code	Enter Vienna code and class and click search button
The result panel will show the list of trademarks that are registered/objected/abandoned/removed/withdrawn, which will help to know the viability of the proposed mark.

Word mark Search- During the time of this search three things to be taken care of and they are- choosing the word mark option, entering the word name and then class. It is to be remembered that same wordmark will appear for that class only. For Search in other classes, class details has to be entered every time.

Phonetic search- Phonetic search helps when trademarks use the same pronunciation. Similar-sounding trademarks can create confusion, and one can use phonetic search for these. Therefore, you can follow the same step mentioned above for the phonetic search of the trademark.

Vienna code search- This type of search is performed to find a similar device mark. The trademark office provides a Vienna code for the trademark applicant having such mark. While doing a Vienna code search, one must enter the Vienna code followed by the class of the goods or service.  

The link for trademark search in India is:-

1. Go to IP India website: ipindia.gov.in
2. Select Trademark and click related links
3. On related links click Public search
4. On clicking public search, you are directed to external website, where you have to click, yes.
5. On clicking yes, a new page will open, where you need to select word mark or phonetic in Search type.
6. In the next step, enter the name of trademark you desire to conduct search in the first box. In the second box, you are required to enter the class (only one class at a time) as per the goods or services.
7. In the end, click search and immediately all the trademark which are similar or deceptively similar to the search mark will appear with all the details like applicant name, company name, type of mark, class, goods description, status of the mark, date of application etc. which will provide clear picture of the proposed mark.
8. The search results will provide information on trademarks that are already registered or pending in India that are similar to the one being searched for. However online search sometimes may not be foolproof and so it is always safe to consult a trademark attorney or agent to conduct a comprehensive search.  
9. The comprehensive trademark search covers all relevant sources of trademark conflicts. A comprehensive trademark search includes searches from different sources like trade directories, social media platforms, online marketplace and other useful databases. It includes searching not only for identical trademarks but also for trademarks which are deceptively similar to the trademark to be applied for. During the time of examination, the trademark registry considers similar trademarks when determining whether to register a trademark. A comprehensive search is required as it raises the alarm in case of conflicts before a trademark application is filed.

UTILITY OF TRADEMARK SEARCH RESULTS

Once the trademark search is completed, the next step is to analyze the search results to determine whether the proposed trademark is likely to be registered or not.

If the search results indicate that the mark to be applied is likely to conflict with any existing trademark, it is better to alter or abandon the mark to remain safe. On the other hand, if the trademark search results indicate that the mark to be applied is unique and not infringing on any other existing mark then it is safe to file an application for registration of trademark. Basically trademark search is the very first step in trademark registration filing and skipping this step can be fatal for any new application.

CONCLUSION

Therefore, conducting a trademark search in India is an integral part of filing a trademark application to know the viability and uniqueness of the proposed mark. If any similar mark exists in the market on search, change the proposed mark. Trademark search gives idea about the use of the mark by any other party. Based on such a trademark search, we recommend our client to apply trademark for registration.

Trademark search may be challenging and time consuming and if anyone do not have time or experience our company guides in the process.   

It is imperative to do trademark search before filing an application. If all the boxes are ticked beforehand, the registration process will be smooth and easy.  

Feel free to reach out to us at Agarwal Consultancy  Services for all your trademark registration-related queries and assistance!