Trademark Search

Trademark Search: Why is it important & How does it work?

What is a trademark search?

When registering a trademark, there is a risk of infringing third-party trademark rights. Therefore, a trademark search could help you avoid a collision with older trademarks.

The trademark search focuses on trademarks that are filed or already registered in the trademark register. This includes checking for older identical or similar trademarks (identity and similarity search).

Since a trademark has, among other things, the function of differentiating the goods or services of one company from those of other companies, it is important to consider when choosing a trademark whether there is a risk of it being confused with an earlier trademark or simply being associated with it.

Should this be the case, the owner of the earlier trademark can request the cancellation of the younger trademark, or this can be appealed at a later date.

Why should you do a trademark search?

It should be noted that the Swiss Federal Institute of Intellectual Property (IGE) only checks the existence of absolute grounds for refusal prior to registration, i.e. whether a sign can be registered as a trademark.

The IGE does not search whether your trademark infringes older third-party rights (relative grounds for refusal), but owners of older identical or similar trademarks can object to the registration of your trademark.

For this purpose, before applying for trademark registration, possible risks of absolute or relative grounds for refusal can be identified by means of a trademark search, which can save your time and money.

What does a good trademark search focus on?

The purpose of a trademark search is to identify other (older) rights and trademarks. The trademark search also often helps a user to understand exactly who is active with similar brands in similar areas.

The trademark search always focuses on the service or goods areas in which the provider is active and for which the trademark should provide protection.

The trademark search also helps with the registration of the trademark, because the trademark search makes it possible to understand exactly in which area similar trademark protection is enjoyed.

The scope of protection of one’s own brand can thus be interpreted wider or narrower.

The specialty of a trademark search is that similar areas can also play a role in the trademark area.

For example, if I want to approve a brand for an electronic musical instrument, both the product class for musical instruments (Nice class 15) and product nice class 9 for electronic functions of the instrument can be relevant.

The protection of a trademark can therefore overlap Nice classes. The same applies to older rights that may have older rights from a different nice class or with similar wording as my trademark.

It is important to recognize how strong an already registered brand is and how far this brand radiates beyond the actual brand name or the actual Nice classes.

Identity Search or Search for older trademarks

An identity search can help you to identify a potential collision with older trademarks before applying for a trademark.

The identity search clarifies whether your desired trademark is identical to an earlier trademark and intended for the same goods or services as those of the earlier trademark.

Wordmarks with the same character sequence are considered to be identical. However, one not only compares the wording of identical older brands but also their Nice classes.

(Swiss Federal Institute of Intellectual Property) is a trademark search in the trademark database of the Swiss Federal Institute of Intellectual Property (IGE) in Bern.

The IPI’s trademark database is free and the best recommendation for trademark Search in Switzerland.

Similarity Search or search for similar trademarks

When choosing your trademark, you should make sure that it is not similar to a previously registered mark. If there is a risk that a new trademark will be confused with an older trademark or simply associated with it, the new trademark can be excluded from trademark protection.

The owner of the earlier mark can request the cancellation of the younger mark within the opposition period, or it can be challenged at a later point in time.

The assessment of the likelihood of confusion is complex as there are numerous aspects to consider. Basically, the following criteria are to be checked:

• Similarity of the goods and services
• Similarity of the signs
• Distinctive character of the earlier mark: Assessment of whether the earlier mark is strong or weak. A strong trademark is a very well-known symbol that is granted a greater scope of protection than normal or weakly distinctive brands. The stronger the older brand, the greater the likelihood of confusion.

A similarity search covers these basic aspects and serves to avoid a potential collision with older, similar brands, which can save you time and money.

Identity Search

Identity search can help you identify a potential collision with older trademarks before applying for a trademark.

The identity search clarifies whether your desired trademark is identical to an earlier trademark and intended for the same goods or services as those of the earlier trademark.

Wordmarks with the same character sequence are considered to be identical. However, one not only compares the wording of identical older brands but also their Nice classes.

Similarity Search

When choosing your trademark, you should make sure that it is not similar to an already registered trademark. If there is a risk that a new trademark will be confused with an older trademark or simply associated with it, the new trademark can be excluded from trademark protection.

The owner of the earlier trademark can request the cancellation of the younger trademark within the opposition period, or it can be challenged at a later point in time. The assessment of the likelihood of confusion is complex as there are numerous aspects to consider.

Basically, the following criteria must be checked:

• Similarity of goods and services
• Similarity of signs
• Distinctiveness of the earlier trademark: Assessment of whether the earlier mark is strong or weak. A strong trademark is a very well-known sign that is granted a greater scope of protection than normal or weakly distinctive brands. The stronger the older brand, the greater the likelihood of confusion.

A similarity search covers these basic aspects and serves to avoid a potential collision with older, similar brands, which can save you time and money.

Protectability of the brand

In the case of a trademark application procedure for the entry of a trademark in the trademark register, the responsible office checks whether the legally regulated formal and material requirements are met.

The formal requirements relate to the fulfillment of the requirements for the granting of a filing date, the suitability of the applicant as owner, the timely payment of fees, as well as other registration requirements (e.g. form and content of the application, trademark form, representation, etc.).

With regard to the material requirements, one checks both the capacity of the sign and the existence of absolute grounds for refusal.

The check or of brand capability focuses on whether a brand is suitable for differentiating the goods or services of one company from those of other companies.

The Swiss Federal Institute for Intellectual Property (IGE) also examines ex officio whether there are absolute grounds for refusal:

• Whether a sign is in the public domain
• Whether a shape defines the essence of the goods or a shape of the goods or packaging is technically necessary
• Whether it is a misleading sign;
• Whether a sign violates public order, good morals or applicable law

If one of these reasons exists, the mark could be excluded from trademark protection.

Company Search

The company name is the name of a businessman under whom he conducts his business and gives his signature. The company is entered in the commercial register and enjoys certain regional name protection.

With trademark registration, you protect the company name comprehensively. Its products and services can be protected by trademark law.

As part of the company search, it is checked whether your desired brand has already been registered as a company name by a third party.

Who does trademark search?

You can either do a trademark search yourself or commission a professional tm search. One often thinks that the Trademark Office is looking for older trademarks of the same type.

The Swiss Federal Institute for Intellectual Property (IGE) does not check it, however, only the existence of absolute grounds for refusal.

Should I do the trademark search myself or should I commission it?

You can of course carry out a trademark search yourself. However, trademark search can sometimes be legally complex. A professional trademark search can offer extensive service and precise evaluation of the search results due to many years of experience and in-depth knowledge of trademarks.

tm.legal provides you with a comprehensive search report. tm.legal (SAMT AG) specializes in trademark law and the protection of intellectual property with trademarks.

We help you with the choice of the search and the classes of goods and services to be searched, with the identification of similar older trademarks and the assessment of absolute reasons for refusal. You will receive a comprehensive search report that gives you an overview of the results and detailed information on the problematic brands.