Authors: Violeta Sutkiene, Associated Partner, Head of the Trademark and Design Division at METIDA, Daiva Bukniene, Head of Searching and Watching Division, Coordinator of International Relations at METIDA
Opening a shop, launching a new product or service cannot happen without the creation of a new trademark. Although you might think that your own created trademark cannot be a copy of a previous mark, it is still possible for it to be identical or similar to an earlier trademark.
An IP world is now boasting an abundance of databases where anyone can check if their created trademark is similar to the earlier mark. After having checked these databases and not found any identical trademarks, many proprietors register their marks believing their trademark to be unique. However, the reality is somewhat different. Despite of current possible access to the trademark databases, the importance of the professional trademark search has not yet diminished, as checking the earlier registered trademarks is not enough for registering the new trademark.
Thus, before registering your trademark, we recommend you to book the trademark search from the professionals for the following six reasons.
1. Not only identical, but also confusingly similar trademarks can evoke opposition (more on this, read http://www.metida.lt/Lietuvos-Latvijos-ir-Estijos-patentu-biuru-praktika-1444.html):
2. It is also important to evaluate the similarity of services or goods. This evaluation might seem to be quite straightforward in some cases, e.g. a company specializing in dairy products would not compete with a company producing cars. Although this sounds reasonable, this thinking, unfortunately, is not always justified in the IP world. If, for example, a dairy manufacturer starts using Mercedes-benz trademark, they will be accused of using the well known trademark or the trademark with reputation for their product’s promotion purposes. This is only an example of the numerous nuances, which cannot be solved without the help from the professional.
3. The trademark world has been immensely affected by the IP TRANSLATOR case, which has made it both more chaotic and orderly (http://metidalaw.business/2013/04/25/nematerialaus-turto-apsauga-reagavimas-i-pokycius/). There has become a tendency to assess the similarity between the goods and services related to those goods, or vice versa (e.g. the similarity between the trade of certain goods and the production of that goods) evoking new discussions. But is everyone who creates the trademark capable to predict these risks?
4. Being formed by each country’s professional lawyers and attorneys, the case law usually differs within a country. Hence, assessing the similarity of the trademarks, services or products without any judicial grounds is simply not enough.
5. Not only the proprietors of earlier trademarks can oppose your trademark. First of all, your trademark is examined in the State Patent Bureau, where experts evaluate if your trademark conforms to the absolute grounds, e.g. whether it is not amoral or of the descriptive nature (for instance, you attempt to register CANDY for your produced sweets), or whether you have a permission to use word ‘LITHUANIA’ (for instance, you attempt to register LITHUANIAN CANDY) and etc. Some patent offices perform a substantive examination to assess whether the trademark conforms to the relative grounds too. Hence, would you really like to register your trademark without running these aforementioned steps? The outcomes of your actions may be painful, especially if, after one year, your trademark registration is refused on either absolute or relative grounds. In this period, your product could successfully enter the market, could be widely advertised and become well known to the public. In this case, changing your trademark would be an expensive investment. Additionally, infringing the rights of the earlier trademark may cause legal disputes.
6. Paradoxically, it is not always the case that you need to avoid registering your mark when you find identical or confusingly similar trademarks in the databases, as you also have to take into account whether the earlier trademark has been actually used. You may never know what opportunities you may get from this.
It is always worth getting advice from professionals who perform the trademark search and assess its results, as after having worked in this industry for many years, they will always predict the obstacles and give the solutions of your trademark registration. However, if you wish to successfully find a registered trademark or any IP object that will not cause any risks, you can always check our website www.ipmarket.lt.