Trademark is an important asset of the business. Customers associate the quality of a product with their trademarks. It helps in identifying the product. The aim of the proprietor is to find such a trademark which is unique, distinctive and is not violative of someone else’s trademark.
A trademark can be identified as any mark, symbol, name, sign, design or anything that helps the customer identify your products and distinguishes them from the similar goods or services of other proprietors. It is important to conduct an online trademark search before applying for a trademark.
Need for an Online Trademark Search
Various trademarks get registered each day under different class or classes of goods. It gets difficult to keep a track of all of them. So, with the help of an advocate it gets important to conduct a trademark search online before applying for a particular trademark. Trademark acts as a source of communication between the customer and the proprietor. The owner of a registered trademark has an exclusive right to use the particular registered trademark.
The main objective of an online trademark search is not to look for infringing trademarks but to protect the proprietor from trademark infringement suits. Before submitting an application for registration of trademark, one should make sure that a proper online search has been conducted. This is because-
- It provides you with a list of similar mark’s choice of which should be avoided.
- It prevents from choosing phonetically similar marks. Phonetically similar marks have a tendency to confuse the consumers and hence should be avoided. For example, Coca Cola and Campa Cola.
- It provides you with the information on well-known trademarks which have a universal presence. These trademarks are widely known. One should not select an identical trademark as it might lead to an infringement action. Well known trademarks include Cadbury, Reliance, Kodak, etc.
- It informs you about the prohibited marks which cannot be used as a trademark. You can check whether your trademark falls under this list. Prohibited trademarks include emblem, flag, etc.
- It saves on time and money. It helps to know about the prior users of the trademarks. This helps in preventing wastage of time and money on change in trademark in the future.
- It prevents litigation. If a trademark similar to the trademark of the other is chosen, it might lead to an infringement suit in the future. A prior search helps in preventing such lawsuits.
- If you try to register a mark which is similar to another mark in the similar class of goods (which might lead to a confusion in the mind of the customers), then your application will be denied and the application fees will not get returned. So, it helps in saving time and money.
- It also provides information on the generic and specific marks which are difficult to be registered. For example, soft pampers is a generic mark.
A trademark search database is maintained by the Comptroller General of Patent Designs and Trademarks. The database is available on its website which can be used by both the professionals and non-professionals. The database contains a list of all the applications that were made to the Comptroller General. The list includes all the trademarks that have been rejected, accepted, objected and expired.
A trademark search will provide the user with all the information on the potential trademark. It must be conducted with the help of a qualified and experienced trademark attorney to avoid problems in the future. The search can show a number of matches which might be difficult to understand for a common person. The trademark search status is for a particular class of goods as a trademark is registered under different class or classes of goods.
A preliminary trademark search helps in avoiding objections under Section 11 of the trademark Act. This helps the proprietor in analysing that whether the application when made will result in acceptance or not. It provides three benefits – protection from objections from the Controller’s office, protection from future litigation and opposition proceedings. A trademark search can also be conducted on a privately-operated trademark database before applying to the Controller’s office in order to eliminate all the potential risks.
A proper trademark search helps in analysing the strength of the particular trademark. This is important as a trademark leaves a huge impact on the minds of the customers. It becomes an identity of the business. If the trademark looks weak then the proprietor gets a chance to modify or change the mark. Sometimes, trademark search outside India is also required with respect to well known trademarks.
For example, Christian Louboutin’s red sole is a well-known trademark. An infringement suit was filed against some shoe sellers in Karol Bagh for selling stilettos with a red sole. So, it is important to keep in mind that one should not have a trademark similar to a well-known trademark that has a worldwide presence. This makes it imperative to conduct an online search with the help of a trademark attorney before applying for a trademark.