Filing a trademark with the INPI, EUIPO, or WIPO requires ensuring beforehand that the chosen distinctive sign is available and does not infringe on the rights of other applicants. This process is called prior art search, and it helps avoid future conflicts that could challenge the validity and use of the trademark. But what exactly does a prior art search involve? What are its advantages? When and how should it be conducted? Who can handle it? Discover the answers in this review.
What is a prior art search?
A prior art search, also known as a trademark availability search, is an operation that involves identifying prior distinctive signs that have been filed, registered, or used, which could obstruct the registration of your trademark. In other words, it is about verifying that the sign you wish to file is free and does not violate the rights of third parties. Be careful, as the prior art search should not be based solely on the previous trademarks of third parties. Other rights may potentially conflict with the trademark: copyright, designs and models, business names, domain names, etc. Therefore, the prior art search requires particular expertise.
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Trademark legislation indeed provides for the principle of “first to file, first owner“. The rights to the distinctive sign therefore belong – in principle – to the first natural or legal person who registered the concerned trademark with the INPI (National Institute of Industrial Property), the EUIPO (European Union Intellectual Property Office), or the WIPO (World Intellectual Property Organization), depending on the territories involved.
The prior art search is conducted by taking into account a dual aspect: the search for identical or similar signs according to the targeted territories, but also the verification of the identified signs concerning the classes of products or services that may be identical or similar. It is essential to keep in mind that trademarks adhere to the principle of specialty: a trademark is protected only for the products and services for which it is filed, as well as for similar products and services. The challenge of the prior art search will therefore be to identify identical or similar signs on these two aspects.
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To successfully carry out this process, contact the Kerose Law Firm.
Why conduct a trademark prior art search?
The availability of the distinctive sign is one of the essential conditions for the validity of your trademark. Indeed, if you register a trademark that is identical or similar to a prior trademark, you risk committing an act of infringement, which is punishable both criminally and civilly.
Moreover, the holder of the prior trademark can oppose your registration (opposition procedure) and request the cancellation of your trademark. You would then lose the rights to your trademark and all investments made. Therefore, the prior art search allows you to secure your trademark application and prevent potential disputes that may arise later. It also enables you to assess the distinctiveness of your trademark and its commercial potential.
When should a prior art search be conducted?
The prior art search should be conducted before registering your trademark with the filing office. It is advisable to carry it out as early as possible, as soon as you have chosen the distinctive sign you wish to use for your trademark.
Thus, it is possible to adapt your trademark filing strategy based on the results of the search. For example, you may modify your distinctive sign, choose another class of products or services, or abandon your project if the risk of confusion with a prior trademark is too high.
Who is responsible for checking the availability of a trademark?
The verification of a trademark’s availability is not carried out by the INPI, EUIPO, or WIPO. It is the responsibility of the trademark applicant to carry out this process. They can do it themselves or entrust it to a professional in intellectual property law, such as a lawyer or an industrial property consultant. These professionals have the skills and tools necessary to conduct a complete and reliable prior art search. They can also assist you in the trademark filing process and advise you on the protection of your distinctive sign.