Trademark search

Why a trademark search is important and how it works.

An article from Dr. Norman Dauskardt

Before registering a trademark, it is essential to conduct thorough trademark search. This process involves checking whether the rights of owners of "older" trademarks could possibly be infringed by the planned trademark. A professional trademark search therefore plays an extremely important role from a legal perspective, as it can significantly reduce the risk of trademark conflicts. But also from a marketing perspective, it is important to avoid any risk of confusion with another trademark due to similarity.

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Specialist lawyer for intellectual property rights

Further contributions by Dr. Norman Dauskardt:

1. Before the trademark search: Selecting the territory of protection

Before starting the trademark search, the question of the territory in which you want to protect your trademark should be clarified. Depending on the selection of the protection territory, the trademark search must also be conducted in the relevant trademark registers to accurately check whether a trademark in this territory conflicts with another trademark that has already been registered.

Unfortunately, there is no global trademark yet; instead, each sovereign state has its own trademark law. A trademark only enjoys legal protection where it has been registered (known as the principle of territoriality). The question of the territory of protection therefore correlates with the question of where the trademark is intended to be used. The scope of territorial protection also depends on the budget you have available for your trademark protection: the larger the protection territory, The higher the costs for trademark registration(s). From a German perspective, there are basically three trademarks of interest: The German trademark, the European Union trademark and the international trademark registration according to the Madrid System.

More articles from
Dr. Norman Dauskardt:

2. Check trademark names - is the sign eligible for protection?

Once clarity is gained on the desired protection territory of one's trademark, the next step is to check the trademark name to find out whether the sign can be protected in this area at all. Not every sign can and may be protected as a trademark. The trademark office examines registrability ex officio during the application process and rejects the trademark if it sees an absolute ground for refusal.

Which trademark names can be protected?

In principle, various forms of signs can be protected as trademarks as long as they are only generally suitable for "marking" products, e.g:

  • words and personal names as word marks (e.g. "Porsche", "Boss", "Siemens"),
  • slogans as word marks (e.g. "Advancement Through Technology " by Audi)
  • images and logos as figurative marks (e.g. the three stripes of the adidas logo or the bitten apple of the technology company Apple),
  • letter and letter sequences: (e.g. N-TV, CNN),
  • numbers or number combinations (e.g. 4711),
  • combinations of the aforementioned trademarks, in particular word/figurative marks,
  • sound signs (e.g. the Intel jingle or the Telekom jingle),
  • three-dimensional designs, especially product shapes (e.g. the Rocher ball),
  • and even abstract color marks (e.g. the color blue for Deutsche Bank).

Which trademark names cannot be protected?

So that a sign can be registered as a trademark, it must, inter alia, be distinctive and must not:

  • describe the products for which it was registered,
  • be commonly used to describe the products,
  • mislead about the nature, quality or geographical origin of the products,
  • violate public order or morality or
  • contain national emblems such as national coats of arms and national flags.

There is an almost countless number of official decisions and court judgments for each of the aforementioned grounds for refusal. A few examples are given below to illustrate the grounds for refusal:

The term "Auto" for the good car cannot be protected as a trademark because it directly describes the good and it must not be permitted to exclude its competitors from the permissible use of descriptive terms. The same applies to the trademark "Apfel" for the good apple juice. However, the trademark "Apple" can be protected for computers because the term apple does not have a descriptive meaning in this field. By the way, the German Patent and Trade Mark Office (DPMA) assumes that the German public understands the English language well and can translate many English words, so that descriptive terms for goods in English are usually not registered as trademarks either.

Mere advertising claims and praise, such as "inexpensive!", "hot", "ingenious" or "the best" are also not capable of being protected because the public does not recognize a trademark in them. They lack distinctiveness.

For example, the trademarks "LACTOFREE" for lactose products or "BEST MEDICAL" for shoes were considered to be misleading and therefore are not registrable.

The word sequence "READY TO F**K" within a word/figurative mark was deemed offensive by the Federal Court of Justice in 2012 and may not be registered. In general, it can be noted that trademarks that contain morally difficult topics should at least be intensively checked to determine whether they violate public order or morality.

Why is it important to check the trademark name?

The trademark office sorts out strictly and so trademark applications often fail due to the obstacle of lack of distinctiveness or because of their product-descriptive content. The trademark offices check the trademark name very rigorously for these two grounds for refusal. Even a mere indirect descriptive statement in the trademark can lead to rejection. In such cases, it is important to seek legal advice early in the conception phase of developing your brand presence.

3. Trademark search for other, protected conflicting signs

The trademark search aims to identify older protected conflicting signs. This is because neither the German Patent and Trademark Office (DPMA) nor the European Union Intellectual Property Office (EUIPO) check during the trademark application process whether there are older protected trademarks that stand in conflict with your own trademark. Therefore, the trademark applicant should, ideally before filing the trademark application, conduct a thorough trademark search to check if protecting the own trademark is possible.

This is crucial for the future of your own trademark idea and the resulting brand strategy, as intellectual property law gives the owner of the older trademark an exclusive right. So the owner of the older trademark can prohibit the use of younger identical or similar signs for identical or similar goods and services. Consequently, they can also take action against the registration of identical or similar younger trademarks for identical or similar products. If there is a likelihood of confusion, the owner of the older trademark can file an opposition to the trademark registration and issue a trademark warning to the applicant. This can result in the cancellation of the trademark, cessation of use, and the claiming of damages. Statistically, oppositions are filed against one in five trademark registrations.

How is a trademark search conducted?

An online trademark search in publicly accessible trademark registers can provide initial indications of whether there are problematic older trademarks:

It is important to distinguish between identity searches and similarity searches. Identity searches examine whether the planned trademark is still available or whether it already exists in the relevant trademark register and has therefore already been protected by third parties. Although this type of trademark search is necessary, it is not sufficient for effective protection, as even similar, already existing property rights (in particular trademarks and company names) can conflict with your own trademark idea. For this reason, all variations of the planned trademark should also be compared with the register in a subsequent similarity search.

When conducting a similarity search, attention must be paid not only to the similarity to a trademark, but also to which trademarks are registered for similar products in the same or similar classes (so-called Nice Classification). The key point when examining such risks of collision is the so-called likelihood of confusion (cf. § 14 MarkenG, § Section 42 MarkenG and Art. 8 UMV, Art. 9 UMV). Simplified, there is always a likelihood of confusion if the consumer might assume that the goods and services could come from the same company (or related companies) due to the similarity of the signs on the one hand and the similarity of the goods and services on the other.

Prerequisite for conducting a comprehensive trademark search, including a similarity search, is therefore the determination of goods and services, at least according to the appropriate Nice classes, for which the future trademark is to be protected. Only in this way can it be accurately checked whether identical or confusingly similar signs are already protected for other market participants in the areas in which the trademark is to be used.

4. After the trademark search: Create a list of goods and/or services

Once the protectability of the desired trademark has been checked, the list of goods and services must be drafted and attached to the trademark application. Since a trademark is generally protected only for those goods and services that are included in the list of goods and/or services, the greatest effort should be put into the precise preparation of the list.

The rule here is: As much as necessary, but as little as possible. You should specify as many goods and services as necessary to ensure that the trademark enjoys comprehensive protection for the entire planned business activity. On the other hand, the list should also contain as few goods and/or services as possible, because the narrower it is, the lower the risk of conflict with older trademarks. Additionally, a trademark must be used for the goods or services for which it is registered (compulsory use after expiry of the 5-year grace period). Otherwise it can be (partially) canceled. Therefore, it is not advisable to register a trademark generically for all goods or services of a trademark class or consistently with the respective generic terms of a trademark class.

Goods and services in the NCL and the eKDB

All goods and services are divided into a total of 45 classes based on the Nice Classification (NCL). Classes 1 to 34 are classes of goods. Classes 35 to 45 are service classes. The NCL comprises internationally defined lists of certain goods and services, which include a total of approx. 9,000 terms.

Since the terms for goods and services contained in the NCL are not sufficient to cover the entire spectrum of goods and services available on the market, the European Union Intellectual Property Office (EUIPO) and many national trademark offices in Europe have created a uniform classification database (eKDB) with around 70,000 terms for goods and services, which can be searched here:

It is also permissible to use terms for goods and services that are not included in the NCL or the eKDB. In this case, the relevant trademark offices will check the chosen terms for their specificity and correct classification, which can delay the trademark application process as a whole. Therefore, it is generally advisable to choose officially confirmed terms for goods and services.

5. Advantages of a professional trademark search by a lawyer

If you have discovered one or more similar trademarks during your own trademark search, it is always advisable to contact a lawyer for intellectual property. In this way, the probability of a successful application can be better assessed and unnecessary official fees due to a to a refusal of registration can be avoided. We strongly advise you not to apply for a similar trademark "on the off chance" if a collision (and consequently a legal dispute) is already foreseeable.

In the presence of a certain risk of conflict, extensive expertise in trademark law is essential for the subsequent strategic approach. In certain cases, the list of goods and services for the trademark to be applied for can be narrowed down in order to minimize the risk. In other cases, it may make sense to contact the owner of the earlier trademark in order to conclude a delimitation agreement or a coexistence agreement. In still other cases, an application for cancellation can be filed against an unused older conflicting mark. But even if no collision is foreseeable, it is advisable to have a professional trademark search conducted by a lawyer to reliably determine the legal trademark conflict risk in the first place.

Are you looking to conduct a legally compliant trademark search by a lawyer?

As specialized law firm for trademark law we at ab&d Rechtsanwälte will be happy to support you with our many years of expertise!