Sow smart, bloom surely: The importance of scheduling a new trademark search

Spring is a symbol of new opportunities, fresh ideas and growth. For many entrepreneurs, this is the perfect time to launch a brand and give their business a boost. Koen de Winder outlines the importance of conducting a new trademark search first. 

A trademark is not only a business card, but also a valuable means of recognition that can contribute to the reputation and success of a company. Just as you carefully plant seeds in the spring to ensure a beautiful harvest, it is important to proceed carefully when filing a trademark. Unfortunately, many entrepreneurs skip a crucial step by overlooking the need to conduct a trademark availability search to ensure they have selected a registrable trademark. From legal disputes and financial losses to the potential loss of your chosen name, this can have serious consequences for brand owners. In this article, we discuss the risks of filing a trademark without first running a preliminary search and why it is essential not to skip this step.  

A trademark availability search, also known as a trademark clearance search or new trademark search, examines whether there are any risks associated with the use or registration of the desired trademark. Typically, this type of trademark search involves searching national and international trademark registers to determine whether there are identical or similar trademarks that could cause confusion among the public. A search can also look at possible associations that the desired trademark may evoke. In some countries, names may have an inappropriate meaning, so a linguistic search provides vital insight into determining the meaning of a name in the country where you want to operate.  

Running a new trademark search is important as it helps identify the possible risks in advance and to prevent you from infringing on older rights by using your brand. In this article we discuss several risks. 

Difficulties in trademark registration  

Without an availability search, you run the risk of having your trademark application rejected by the trademark office. In some countries, applications for trademarks that are similar to a previously registered trademark will be rejected. This not only means losing your application fee but also returning to square one with your branding. A new trademark search will help you choose a strong and registrable trademark that meets all legal requirements.  

Legal disputes and trademark infringement  

Another important risk of filing a trademark without prior examination is the risk of an objection (“opposition”) being filed by holders of prior rights during the trademark application. If the applied-for trademark is similar to a previously registered trademark, the owner of that existing trademark can file an opposition, which can lead to the refusal of the trademark application.   

Even after registration, objections can be raised by holders of older rights who can initiate a cancellation action or an infringement action in court. The costs of a lawsuit relating to a trademark conflict can be considerable. In an infringement procedure, damages can be claimed, and the procedure can lead to the loss of your trademark rights.   

Problems during or after the rollout phase  

If a trademark conflict arises, this can lead to delays in the launch of your product or service. This can have negative consequences for your business planning and competitive position. Greater consequences can arise if your product or service is already on the market. Developing and launching a brand involves (considerable) investments. If it turns out that the brand is not or no longer available, these investments can be lost. Furthermore, in the event of a trademark conflict, it can be demanded that all products be removed from the shelves. This has significant financial consequences. In this context, a trademark availability study is a relatively small investment compared to the potential losses of not choosing or securing a registrable trademark.   

Damage to reputation   

A trademark conflict can also damage your company’s reputation. Consumers may lose trust if they learn that your brand is involved in a legal dispute. Additionally, it may appear as if you have deliberately copied an existing brand, which can damage your credibility.   

Loss of time and favourable market entry  

Filing a trademark is a process that takes time. If after this process it turns out that the trademark is not available, that process starts all over again. This means not only creating a new trademark but also re-examining the new trademark for availability and going through the filing process.   

Likewise, filing a trademark is a process that requires attention and planning. Skipping a trademark availability search can lead to unexpected risks, such as legal disputes, financial losses and reputational damage. By conducting a new trademark search, you can limit those risks, avoid unnecessary costs and build a solid reputation from the start.  

If you have any questions about how or when to conduct a new trademark search or what to do if a trademark conflict is identified, speak to your Novagraaf attorney or contact us below.  

Koen de Winder is an Associate IP Consultant at Novagraaf in the Netherlands.