The importance of a trademark search

The importance of a trademark search

A frequently asked question in when deciding on a new compnay name or brand name is do I need to do a trade mark search; the answer to which is yes. Following on from this the next question is can't I just use the searches which are freely available on the relevant Trade mark Office Website. While this can provide a good starting point as they will show if anything identical is already registered they do not always necessarily tell the full story.

When checking to see whether a trade mark is available to be registered is it important to not only look for identical marks but also to consider similar ones.

The similarity of a mark is assessed on three levels:

1. Visual – this includes the sequence of the letters, structure of the mark, number of words and any figurative/graphical elements

2. phonetic i.e. how the mark is referred to in speech.

3. conceptual – what is the marks semantic content and meaning.

The assessment will generally take the form of consideration of the marks as a whole, on the basis that the average consumer will not analyse the elements separately. In this regard any dominant and distinctive elements may play a larger part on the basis that it is these elements that consumers are more likely to remember. The fact that consumers recollection of a mark may not be perfect will also be taken into account. Following on from this another factor to bear in mind is that consumers generally focus their attention on the beginning of a mark and as such similarity in this element of the mark may have a greater influence; although the applicability of this will need to be assessed on a case by case basis as if the mark contains other more dominant elements these may override this consideration.

The marks should also be viewed in conjunction with the goods or services for which they are registered. All goods and services are allocated to a specific class under the Nice Classification (numbering class 1- 45). However the fact that two particular goods or services fall within the same class is not a decisive factor in terms of determining similarity. At best it may be viewed as an indicative factor but this will depend on the scope of the class and as such may not be applicable in all cases. Likewise the fact that two goods or services fall within different classes does not necessarily mean that they are not to be viewed as being similar. An example of this is a goods classification versus a service classification connected with selling that good, for example class 25 which includes clothing and class 35 retail services in the field of clothing.

Please get in touch with jane@trademarkroom.com for a free consultation