If someone else has already registered your mark, it is not available. You can save time and money by searching for marks that could come into conflict with yours before you apply. In the European Union (EU) there are more than 11 million registered trade marks.
It costs nothing to search, and the information you find is crucial to your application. If someone already owns a trade mark they might want to object to your application.
EU trade marks
You can search for registered trade marks using two different databases:
eSearch plus is the EUIPO's access to its database of European Union trade marks and registered Community designs. It can help you find out if someone has registered a similar trade mark with us. With eSearch plus, you can also perform image searches and image monitoring, find a representative or search the Bulletin.
The TMview database contains information from all of the EU national IP offices, the European Intellectual Property Office (EUIPO) and a number of international partner offices outside the EU on trade mark applications and registered marks. A trade mark applied for or registered at national level before yours could pose a threat to your application.
There are three main factors to take into account when analysing the search results: the timing, the sign, and the goods & services. Checking these factors does not rule out risks but does minimise them.
Trade marks are protected on a ‘first come, first served' basis.
Trade mark protection begins when a legal filing date is given.
However, when establishing who has filed first, it is not only the filing date of the potential competitor's trade mark that has to be taken into account, but also any priority date.
What is priority?
Earlier trade mark applications can enjoy a right of priority during a period of six months from the date of filing of an EU trade mark, and vice versa. This can be requested from trade mark applications filed at national (or Benelux) level, trade marks filed at a state party to the Paris Convention or a member of the TRIPS Agreement or at a state for which the Commission has confirmed reciprocity, or from an EU trade mark application.
If you want to benefit from the right of priority, your EU trade mark application needs to be filed within six months of filing your trade mark at a national jurisdiction. If priority for your national mark is accepted, your EU trade mark application will be regarded as if it had been filed on the same day as the earlier application; that is to say, it will have priority over applications filed by others during that six-month period.
When filling in the trade mark application form, you should complete the part relating to priority. The filing date for the first application will become the benchmark for determining who filed first.
The following example illustrates how priority works. In this example, EU trade mark B has the priority over EU trade mark A even if EU trade mark A was filed before EUTM B in the EU:
EU trade mark B
EU trade mark A
EU trade mark B
Priority date claiming the date of first filing in the USA
Filing date at EUIPO
Filing date at EUIPO
When comparing your trade mark with earlier ones, you need to put yourself in the position of a typical consumer. What you have to ask yourself is: ‘Is a consumer likely to believe that my trade mark already belongs to someone else?' If the answer is ‘yes', you might have a problem.
By the way, don't limit your search to identical trade marks. Signs similar to yours could also pose a threat. In eSearch plus you can search by trade mark name, type, filing date and many other criteria, as well as use images to find similar-looking trade marks.
In the majority of cases, there must also be a link between the goods and services that you offer, and those applied for in the potentially conflicting mark. Here again, the goods and services that you provide do not need to be identical to those of the other party. Even if they are only similar, they could pose a threat.
What should you do with your search results?
If you find that your mark or one like it has already been registered or applied for, you have a number of options:
- Negotiate: contact the owner of the earlier trade mark to reach an agreement (many identical or similar trade marks coexist in the market).
- Risk registration: go ahead and file your application and risk opposition (the decision as to whether to object to an EU trade mark application depends on many factors; the existence of an earlier registration does not prevent you from applying).
- Challenge: challenge the first trade mark.
- Give up: go no further because the risk of opposition is too great.