Searching And Clearance Including Classification Flashcards
What is a trademark search and why is it important?
A trademark search is a check for PRIOR RIGHTS that may prevent you from adopting (i,e registering) and using your trademark.
It is important to do a trademark search to establish if your trademark is available for use and registration. Otherwise, you could be sued for trademark infringement, passing off or face an opposition (or cancellation)
What is TM infringement?
When a competitor uses an identical or confusingly similar trademark in the same or similar goods and services as an earlier registered mark.
Also - if a competitor uses a similar or confusingly similar trademark in different goods or services as an earlier registered mark which has a reputation.
What is the UK Common Law of Passing Off?
In the UK, long-standing use of a mark (normally 3+ years) provides unregistered rights through law of Passing Off.
Harder to prove passing off - have to show the classical trinity of
1. Goodwill - complainant needs to show they have goodwill in their marks for the goods/services they use it on
2. Misrepresentation - public have been deceived by this other product (e.g as to trade origin)
3. Damage - there has been damage, financial or reputational
What are the consequences of TM infringement/passing off?
May be ordered by the court to -
1. Stop using your mark
2. Destroy/repackage existing stock
3. Pay the TM owner damages/account of profits
4. Contribute to other sides legal costs
5. Cost and delay of rebranding
6. Damage to reputation/bad PR
When should you conduct a trademark search?
As soon as possible, when adopting a new trademark
Launching an existing trademark in new jurisdiction
What is the Classification system used for TM’s?
The Nice Classification
Administered by WIPO - used by most countries - as a way to categorize goods and services
45 classes
1-34 : goods (products)
35-45 (services)
Why is classification important?
- Searching - allows to narrow down/focus results, I.e. when searching for identical or similar marks in similar or identical goods and services
- Filing applications - allows to file only in areas of interest
- Trademark watching - allows to narrow down/focus results - after TM is registered, ensuring that no other competitor is using a similar or identical mark in similar or identical goods or services
What is Reclassification?
Some countries that used a different classification system in the past have a process called reclassification where these old registrations are converted into the International Classification System.
Reclassification can also occur when items in a specification have transferred from one class in the International Classification System to another, e.g. playing cards used to be in Class 16 (printed matter) now in Class 28 (games)
Reclassification usually happens at renewal.
- thus it is important to consider when searching in some countries older registrations might use older classifications
EXAMPLE - January 2000 - classes 43, 44, 45 created - prior to that Class 42 was a catch all
What is TMClass?
Tool provided by the EUIPO where you can search for terms and it will inform you if the term is definitely acceptable and what class it is in.
Fairly comprehensive but not exhaustive.
Cannot use terms (in UK or EU member states) like ‘retail services’ have to be more specific e.g. ‘retail services in relation to clothing’
What is the Madrid Goods and Services Manager?
WIPO tool, terms can be put in and you can cross check if they would be accepted by the countries you would be designating in an International application.
May help avoid provisional refusals.
Where to conduct a TM search for a UK TM?
UK Register
International Register (where UK has been designated)
Common Law search
Where to conduct a search for an EU TM?
EUTM Register
International Register (designating the EU and EU member states)
Registers of each EU member states (24 national registers and Benelux Register)
Where to search for US TM?
US Federal Register
International Register (designating US)
State Registers (50 - where applications have to be filed directly)
Common Law
What are the main types of TM searches?
- Word mark search
- Device (logo, figurative mark) search
- Common law search e.g. looking at the internet, social media, domain names
What are the two different types of word mark search?
- full search - covers identical and similar marks including phonetic variations, words with similar meanings etc and will cover the classes into which the goods/services of interest fall, as well as related classes
- Screening search - less thorough, covering identical/near identical marks and usually restricted to class(es) of interest, quicker and cheaper but may not identify all risks
