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a. Introduction

Before filing any trademark, we strongly recommend to carry out a preliminary search for the trademarks (wordmark and/or device (figurative)) you wish to protect.

The existence of prior rights to your own trademark can indeed prevent the registration of the trademark and/or its use. The costs spent for filing your trademark will turn out to be useless, without having to mention the procedural costs and damages that may be imposed by the holder of these prior rights.

It should be noted that prior rights do not necessarily concern filed or registered trademarks; it may as well concern company names or any other commercial sign.

Furthermore, it is not necessary that prior rights be identical to be a bar to registration. Indeed, similar (phonetically, visually or even having the same meaning) rights can also be a bar for the registration of your trademark.

Therefore, preliminary searches which can only cover either identical marks or also similar marks are highly recommended. Furthermore, since the searches are limited on a territorial basis the choice of the countries where the search will be carried out will highly depend upon the choice of countries where the trademark will be used.

Whatever the search which is carried out might be, we insist on the fact that this kind of search is never exhaustive. These searches are only performed with the aim to reduce the risk of conflict.

On the other hand, finding a possible prior right during these searches does not mean that the trademark cannot be protected. Indeed, prior registered trademarks could be considered similar beforehand (because they are, for instance, filed in the same product class) but in fact, they do not represent a risk of conflict (e.g. a trademark for radars and a similar trademark for electrical hovers, whereas radars and hovers belong to the same product class, namely class 9). In this case there is a possibility to settle a potential conflict before filing by negotiating an agreement of trademark coexistence with the holder of the prior right.

What could also happen is that the found prior trademark right is not used anymore or has never been used. For instance, in Benelux there is a stipulation mentioning that the right to the trademark shall be declared to be extinguished if "without just cause, there has been no normal use of the trademark within the Benelux territory in respect of the products for which the trademark is registered, during an uninterrupted period of five years" (Benelux Law Art. 5,2,a and 14,C). This means that if your competitor has not used its identical or similar trademark during 5 uninterrupted years, you can file this trademark at your own name.

b. Search performed by the client himself

In view of the obvious difficulty to find a trademark free of use for the countries of interest, we recommend our clients to inform us if they are aware of any relevant trademark, denomination, commercial use,... used by third parties.

You are indeed in the best position to be aware of similar prior rights (trademarks, denominations,...) that may be used by your competitors in the same industrial field.

It is worth mentioning that for several countries, among them Benelux, your rights on a trademark will be void if your application was performed in bad faith, namely when knowing or inexcusably ignoring the use done in good faith by a third party (Benelux Law Art. 4).

c. Search performed on company names

This search is limited to identical alphabetical denominations (company names, commercial names,…) or to denominations with an identical alphabetical prefix but with small differences at the end of the name.

For some countries, the search on company names also covers similar paraphonetical denominations. The turnaround time for obtaining the results is 5 to 10 working days depending on the country. Usually the result of the search is under the form of a listing and a copy of specific company names including an extract of the commercial register can be obtained upon request.

Obviously this kind of search on company names can be and sometimes should be combined with a trademark search.

d. Search on trademarks

1) Word (verbal) trademark

A. Benelux

Three types of searches can be performed:

(a) Identical search

This search is performed in the registers of Benelux trademarks, of international trademarks designating Benelux and of Community trademarks. This search is performed whatever the number of classes of products and/or services might be. The results are expected within a term of 3 working days. The results are given under the form of a listing and copy of relevant trademarks can be provided upon request.

(b) Similarity search

This kind of search is carried out in the registers of Benelux trademarks, international trademarks designating Benelux and Community trademarks. It takes the form of a listing summarising all the identical and/or similar trademarks. A copy of the relevant trademarks is enclosed. The turnaround time is 10 working days for a normal search. An accelerated search is also possible within 3 to 5 working days.

Both above searches are performed by our own office and they only have an informative purpose.

(c) Official search

This type of search is performed at the Benelux Trademark Office. In this case the Benelux Trademark Office will perform the search in the registers of Benelux trademarks, of international trademarks designating Benelux and of Community trademarks to find identical and/or similar trademarks. The results can be expected within 2 to 6 weeks.

B. Other countries

It is of course possible to carry out searches (identical and/or similar) in almost all countries in the world or in some parts of the world. Costs can vary very much and we are at your disposal to give you an estimate of costs.

2) Device (figurative) trademark

It is also possible to perform a search on device trademarks (figurative trademarks): the costs for this kind of search can vary very much depending on the type of logo, the colours and the countries where the search must be performed. We are at your disposal for further information.