Trademark Search Clearance: Meaning and Types

Any business owner who wants to set himself apart from the competition should protect the qualities that make his company distinctive. The same is true for trademarking any term, symbol, design, or phrase that a firm uses to identify itself in the marketplace. However, before deciding on an identifying substance for their firm, the proprietors must perform an extensive study. A trademark clearance search is one component of this investigation.

A trademark clearance check is essential because it helps you to prevent any legal complications before they arise and before the firm invests time and energy in establishing its brand. It is advantageous to identify any legal obstacles to the company's use or registration of its trademark (which can be the firm's business name, brand name, slogan, or logo) before the company begins to use or apply to register the trademark.

What is a Trademark Clearance Search?

Trademark rights are acquired through usage. Before utilizing a mark to identify your product or service, you should undertake a trademark clearance check to see whether there are any current marks in use that are similar or identical to the one you want to use. A trademark clearance search, also known as a due diligence search, is a systematic search for registered or unregistered (common law) marks that includes the following criteria −

Elements of Trademark Clearance

It includes −

• Before registering a mark, you should check to see if the proposed mark is accessible and protectable. You may prevent the costly implications of an infringement lawsuit, product redesign, and rebranding by searching for existing trademarks.

• When it comes to trademark clearance, there are several places to look. The USPTO, WIPO, EUIPO, and other searchable databases allow users to look for trademarked terms, brands, and even pictures. Parties may also look up domain names, newspaper ads, internet searches, and phone book listings.

• It is critical to remember that simply looking for a single phrase or image will not suffice. You should also look for identical signs as well as marks with slightly different spellings. As a result, think about and include all versions of your name or image in the search.

Types of Trademark Search

Some of the significant types of trademark search are −

• Clearance Search: It is a comprehensive search for markings that are not only identical but may also be regarded as deceptively similar to the mark in issue. As the name implies, the purpose of this form of search is to guarantee that there is complete 'clearance' before applying for the given trademark. To avoid deceptively similar markings, such a search would include various terms and keyword combinations, including audibly similar ones. A check would also be undertaken online, including on domain names, to see whether there are any marks that are misleadingly similar to the subject mark being used.

• Knockout Search: Knockout Search is a sort of search used to exclude markings that are identical or constitute an urgent danger to the mark to be applied due to their striking similarity. It is similar to a search in that the goal is to determine whether there is any obvious and most probable inconvenience to the mark to be applied.

• INN Search: INN is an abbreviation for International Non-Proprietary Names. These are the names that can never be taken or claimed by anyone. INNs are popular words used in the medical industry to refer to a medicine or pharmaceutical ingredient. As a result, no specific entity may possess or apply for INNs, and no phrase deceptively similar to the INN, such as paracetamol, may be owned by any entity.

• Domain Name Search: A domain name is the public face of any company, so obtaining the.com extension for your brand is critical. The manner in which the trademark is to be used is determined by a number of variables. The non-availability of a domain name for the chosen brand is an important element to consider when clearing the trademark for registration.

Post Clearance Search

Following a comprehensive trademark clearance search, you can address the following questions −

• Is the trademark still active, or has it been abandoned?

• What is the likelihood of confusion between your mark and something similar?

• Are the businesses similar?

• Where do you do your business?

These questions might help you make an educated decision about whether to continue or make adjustments. This stage may be split into three major sections, which are as follows −

• Analyzing Availability: After going over a trademark clearance search, you should evaluate your mark's use and registration options. Analyzing a trademark clearance search entails identifying possible conflicts that your trademark application and usage may encounter. The most serious potential conflicts arise when identical marks are used in commerce on the same or similar items. The same thing might lead to registration denial due to the possibility of misunderstanding. The risks of rejection and infringement must be evaluated.

• Assessing Protection Ability: If comparable marks are successfully registered, your trademark may have a strong likelihood of success as well. It might also imply that your trademark is ineffective due to the prevalence of similar trademarks. The findings must be studied, looking for disclaimers of descriptive components of registered marks and developing a judgment on how your application may be affected.

• Analyzing Potential Conflicts: If possible conflicts are discovered during the trademark clearance search, it must be determined if the prior user of the possibly conflicting trademark has grounds to oppose your trademark's registration. If this is the case, the risk must be evaluated. The search can also assist in identifying previous users of an identical or similar brand.

Disadvantages of Not Doing a Trademark Search

If you begin using your mark without first conducting a thorough search, you may be unaware that someone else has already obtained the rights to your name or a similar name. This essentially indicates that your use of the trademark would be infringing on the rights of someone else. This opens the door to the trademark owner suing you for using their registered trademark, in which case you will be required by law to stop using the mark.

If you've already made signs, business cards, ads, brochures, and a website based on a previously registered name, you'll have spent a significant amount of time and money on goods that will need to be replaced. Furthermore, a court might find you accountable for infringement and order you to pay damages as well as the trademark owner's attorney expenses. As a result, it is vital to do a thorough trademark search to minimize potential dangers, litigation, and money waste.

What is a "Trademark Clearance Certificate" (TM-C)?

The trademark registry issues trademark clearing certificates, also known as search certificates. It specifies that the intended artistic work is not deceptively similar to or identical to any registered brand. A trademark clearance certificate's task is also to ensure that no similar applications or claims for the specific creative work have been made by anyone else.

There are two ways to apply for a trademark clearance certificate −

• Manual Filing: If you chose "Manual Filing," you must personally transfer and bring your application to the Registrar Office of Trade Marks for registration in major Indian cities such as Delhi, Ahmedabad, Kolkata, Mumbai, and Chennai.

  After submitting an application for registration to the Registrar of Trademarks, the applicant must wait at least 15–20 days before receiving notification that the application has been recognized.

• E-filing: If you use an E-Filing method, you will receive an instant receipt of recognition from the government on their official website. The indicated individual is now authorized to use the trademark after receiving the acknowledgment certificate.

Conclusion

Failure to do a thorough trademark search might be difficult for organizations that wind up facing trademark infringement. Even if the claimed breach was inadvertent, a company may face legal action and a cease and desist order. By detecting any pre-existing identical or confusingly similar trademarks, a trademark clearing search can considerably lessen the likelihood of the firm getting a demand or legal action from an earlier rights holder alleging violation of his trademark.

If a conflicting trademark is identified and the owner of the conflicting trademark claims his rights, the brand will almost certainly need to rename the firm and/or products or services in order to settle the issue and avoid legal action. Rather than going through this problem later, it is best to be prepared in advance by conducting a trademark clearance search.

FAQs

Q1. Why is trademark clearance important?

Ans. Trademark rights are acquired through usage. Before using a mark to identify your product or service, you should conduct a trademark clearance search to see if there are any existing marks that are similar or identical to the one you want to use.

Q2. Can I use the Internet to search for trademark clearance?

Ans. Searches for common law can include the internet, local business directories, telephone directories, and so on. While it is not required to search them, it is recommended to do so to confirm that the trademark chosen for registration is free of any obstructions.

Q3. How long does it take for a trademark to clear?

Ans. Usually, the procedure takes 12 to 18 months.