Indeed, Intellectual Property laws provide for the requirement of novelty, according to which any trademark to be registered shouldn’t be identical or similar to others already registered (and sometimes used) in the same territory, with regards to identical or similar products or services.
What is exactly an availability search?
An availability search is the extraction of data related to identical or similar prior trademarks, the consequent evaluation of the results obtained and the final opinion about the adoption of the inquired sign.
This can be both a word or a figurative trademark.
An identity search aims at finding only prior trademarks which are exactly identical to the object of the search.
On the other hand, a similarity search helps identifying those prior trademarks which might turn out to be a serious obstacle to the adoption of the searched sign, although only (visually, phonetically and conceptually) similar to it.
The choice between these two searches is made according to the nature, characteristics and type of mark.
Then, it is important to identify the territorial scope of the search and its product sector.
The search can be conducted in any country and must be limited to those classes of goods and services the mark is intended to cover.
Why is it important to conduct an availability search?
If conducting an availability search, then it is possible to knowingly decide to:
- adopt the chosen mark as it seems free of potential obstacles to its registration or use;
- give up its adoption, as there are high risks that it is opposed by the owners of identical or similar prior marks;
- file it anyways, even being aware that its registration might fail or its usage might be opposed by third parties;
- challenge the chosen mark or the goods/services’ list with amendments making it as different as possible from the prior marks found.
Why is it always a good idea to seek an expert’s advice?
- deeply knows the subject matter;
- has many search tools available;
- is capable of identifying the most suitable kind of search and appropriate classes for each case;
- can accurately interpret the results obtained, to finally approve or discourage the adoption of the mark;
- can suggest the most effective changes to the mark, in order to reduce or exclude the risk that it is opposed.
