Trademark is another way of referring to brands of company or firm or any product or services. Although we do not realize it, we deal with Trademarks on a daily basis. Customers’ buying decisions are guided by trademarks and the reputation associated with such brands. A business owner aims at finding the right brands to move forward with, which are appealing, not encroaching on any third party’s right and at the same time is distinctive to the end customers to whom the mark is targeted at. The ultimate aim is that the Customers associate a mark or a brand with someone and are assured of the quality of the goods or services that they receive and are not mislead. Which forms the basis of Trademark law.
Therefore, it is very important to understand the need of a trademark before entering any business. Trademark acts as a communicating tool which makes it easy for the buyers to find the seller. Trademark is an asset which never expires which is an added advantage. Due to this nature of the trademark, it is important to choose the trademark before embarking on trying to register it. In the event, the mark is already been in use, then a search will do little for it. Except help understand what the prosecution will look like. However, at the same time the importance of choosing the correct mark in order to proceed for registration is of the highest importance, as it helps protects oneself and one’s business from any potential litigation as well as helps in determining the course of the trademark prosecution that is in store. Out of millions of marks that are registered across various databases in different jurisdictions, one will have to perform the searches and determine whether a may be registered or not Therefore, a preliminary trademark search is advisable prior to trademark filing.
There are two types of Trademark search services that we offer. We do a preliminary screening of the existing marks in the register to determine whether there is an identical mark that is present in the register which may be brought up by the Trademark office as an Objection under section 11 of the Indian Trademarks Act, in the Examination report. This determination helps the individual or business owner, namely the Applicant make the decision as to whether the filing, when done, will result in an fruitful application or not. Since the Trademark office has expedited its screening process, this process has become of utmost importance more than ever in India. We also do a similar search before embarking on filing the applications in other jurisdictions. This small process which may seem relatively insignificant is indeed a necessary time and cost saving mechanism. Preliminary Search of Trademark may eliminate the chances of following objections or any actions against the mark in future: Objection from the trademark registry, suit for infringement, and Opposition proceedings.
The other type of search is to perform an in-depth search of the available marks in the register with respect to the particular class. This search includes the search of not simply looking at any identical marks in the register rather than point the potential Applicant in the direction of any similar marks to that of the marks that is available in the Register. These marks will be that which will most likely also show up in an Examination report which is received from the Trademark office upon filing. Therefore, knowing the existence of these marks will help determine the course of prosecution, if the potential Applicant decides to file the Application or simply drop the mark. The prior search of trademark will also determine the strength of the mark to be filed, and in case the mark is weak then opportunity is available to change the mark, if substantial branding efforts are not made already with respect to the mark.
It is to be kept in mind that the Trademarks are filed with respect to the respective class, therefore the searches are also performed with the respective class. This search also sometimes helps determine the type of marks that are being filed by the industry with respect to the particular class, which in-turn helps determine whether the art of crowded or not. This information may also help the businesses decide whether a particular mark will help establish a brand or is going to be lost in the multiple similar marks which are already present in the register. This determination when made hand in hand with the business owners helps them make an informed decision.
In depth searches are of importance while trying to build a portfolio with respect to Trademarks. Though an individual applicant, may proceed with just a simple search before filing, certain marks entail an in-depth search in order to prevent a long drawn prosecution.
These searches become foremost important with respect to certain industries like that of the pharmaceutical sector. Since the trends with respect to filing mostly consists of combination of drug names and the name of the company etc, Let us take the example of the word “PILL”. IN common parlance, pill is used with reference to any drug or medicine. However, more particularly, it denotes contraceptives pills. Contraceptive pills are available in many numbers in the industry. There are around 300 entries in the Indian Trademark register which contains PILL as either a prefix or suffix. However, the morning after pill which was launched by Piramal enterprises limited as an emergency contraceptive by the name of I-PILL is very famous and they alone have 11 registered marks in India. They have not only made a distinctive mark out of a commonly used word in the industry but have also branded themselves.
Another example, from a different sector is that of the word STYLE with respect to clothing and clothing lines. There are close to 400 entries in the register with respect to this word in class 25, which consists of clothes and around 144 are registered. These is simply the marks which are starting with the word STYLE. However, there are around 1600 entries which contains the mark STYLE, out of which around 600 are registered. Therefore, even commonly used words are registered when relevant. There are of course other aspects of the law which are also considered and not all the entries are word marks. Knowing what is in store helps in the registration process.
As mentioned above, the trademark search helps us to determine three important things which is a vital step before filing and it is mentioned below:
Determining the existence of objectionable marks which are already on the trademarks register: Marks identical or confusingly similar to the proposed mark, and marks phonetically similar or same with respect to the proposed mark.
Trademark searches for India as well as outside India is done for word mark, numerals, labels and device mark. The search involves a lot of skill and expertise so it requires a skilled and experienced Attorney to conduct the search. As business has a dependency on brand name or trademark so it’s an essential step before attaching a trademark to the business or company or any entity which aims to trade.
Trademark searches for the United states is performed on the Trademark Electronic Search System, more commonly known as TESS. The basis of performing the search is similar to that of the Indian Trademark register, which is universal. One is to determine whether there are any identical or similar marks which may be live in the register. Apart from searching the particular class, you may also want to search for related classes as well. This depends on the Applicant as to whether the goods or services that they are offering falls under multiple classes. This strengthens the marks of the Applicant. This also helps in creating a portfolio for the client which is always better than a single application filing.
Trademark searches for Europe can also be performed on their website called the E-search plus. It also allows for a wordmark as well as a image search for searching for a device mark.
The Trademark Search is of three types:
This type of search determines whether a mark is similar or deceptively similar or phonetically similar to a prior mark. There are Classes 1-45 which have been classified according to the international classification of good and services and the word mark search is conducted with regards to targeted goods/services. You may search with starts with search in the Indian Trademark register to determine the marks which start with the proposed mark that one is looking for. However, in order to obtain a thorough search it is not only necessary to perform that search, but also a contains with search so that all similar marks show up in the search and a determination may be done regarding whether the same may be proceeded or not. The contains with search helps us identify those marks in which the mark which is a part of the second word of a two part mark.
This search is done in accordance to the NCL, or the Nice Classification which was established in 1957 by the Nice Agreement which applies the international classification for registration of these marks. The NICE classification has a recent version which has been in effect since January, 2018.
Device Mark Search:
Device mark include numeral, letter which is designed, plants, celestial bodies, logos, pictures, combination of word and logo, slogans, colors, sounds and even product shapes.
A device mark is searched with the help of International Classification of Figurative Elements of Mark according to Vienna Codification of marks. It was established in the year 1973 and is administered by the World Intellectual Property Organization. When the trademark application comprises of a device mark or logo a Vienna Code is assigned by the trade mark office. The Vienna Code is basically assigned according to the nature of the particular figurative element/logo in question. It is a hierarchy, wherein depending on the shape of the goods, figurative elements are added and is narrowed down to specifics.
While searching for the device marks, the figurative elements must be with respect to the shape and not what it is composed of while determining the Vienna code classification. A common example is a doll, should be placed in the category of human beings as it forms the shape of the human being rather than what it is made up of. This is the key for determining the Vienna code and performing the search in order to determine which device/logo falls under which code. Of course even this search is performed with respect to a particular class, as explained above.
These are codified according to the Vienna agreement, further details of which can be found in the link given below: http://www.wipo.int/classifications/nivilo/vienna/index.htm
This search is done to identify same or similar sounding marks with respect to a targeted mark and for targeted class of goods/services, and sometimes even more specific to the targeted description of goods/services.
On request, we at Singhwal also access paid databases to perform searches so that a detailed search may be performed, depending on the necessity of the potential Applicant. This may be applicable in cases where the Applicant is interested in filing across various jurisdictions and would like to determine the presence of identical or similar marks in the registers of the specific jurisdictions in which the Applicant may be interested.