Trademark clearance search

A trade mark prior rights search is the verification, before filing, that a sign has not already been appropriated by a third party for identical or similar goods or services. The INPI does not examine earlier rights of its own motion during registration. It is therefore for the applicant to make sure the sign is available. A well-conducted search avoids an opposition, a cancellation action or an infringement action after significant marketing investment.

Earlier rights to search for

First, earlier trade marks registered or applied for in France, in the European Union and through the international route designating France. Second, company names, trade names and shop signs known throughout the territory, domain names in use, appellations of origin and geographical indications, copyright and designs. Finally, well-known marks, protected without registration, and the names of persons or local authorities. The list of enforceable prior rights appears in Article L. 711-3 of the French Intellectual Property Code.

Method

The search begins with an identical-sign query in the INPI and EUIPO databases, followed by a search for phonetic, visual and conceptual similarities in the relevant classes of goods and services and in neighbouring classes. The results are analysed against the likelihood of confusion, which depends on the similarity of the signs and of the goods, as well as on the distinctiveness of the earlier mark. The search is carried out by an industrial property attorney or a lawyer, who gives an opinion on the risk and suggests adjustments to the sign or the specification.

Key points

In practice, the prior rights search is not a formality. It conditions the validity of the trade mark and the security of its use. It should be repeated before any extension to new goods or new countries. The firm handles the disputes that arise from insufficiently prepared filings, notably cancellation actions and trade mark infringement actions, as part of its intellectual property practice.