The growth of the Internet has changed nearly every facet of the human existence, and commerce is no exception. The mass proliferation and availability of Internet services has allowed merchants to tap into new audiences and markets that would have been impossible for them to reach earlier. As global commerce continues to expand, there has also been a correlated increase in the number of trademark applications filed each year. According to WIPO (the World Intellectual Property Organisation), the number of trademark applications filed with the USPTO (United States Patent and Trademark Office) rose nearly 10% in the 2014-15 period, and a similar trend was seen in Europe. India saw an even bigger rate of growth, with the number of applications filed rising by over 20% in the same time frame.
As with any phenomenon, it’s not all sunshine and roses. The internet may have made it easier for brand owners and merchants to reach a wider range of customers; but it’s also made it more difficult to pick a unique brand name, as giving customers the ability to purchase goods and services from anywhere in the world also results in them coming into contact with brands from around the world. The ubiquity of online marketplaces has also allowed for unscrupulous merchants to more easily impersonate a well-recognised, popular brand.
If you’re a brand owner, these two situations are both cause for concern. How do you ensure that you’ve chosen a mark that doesn’t infringe on somebody else’s existing mark? On the other hand, how do you ensure that you’re able to catch somebody infringing on your mark at the earliest, and take the requisite legal action so as to ensure that you’re not embroiled in long-running and costly litigation? The answer to both of these issues is the same – you conduct a trademark search.
If you’re looking to establish a brand, you would ideally want to pick a mark that’s unique, distinctive, and instantly recognisable. There is always the possibility, however that another proprietor somewhere else has gone through the same thought processes you have, and arrived at a mark that’s similar enough to yours to be a hindrance to your ambitions for the mark. To ensure that this doesn’t happen, a brand owner can conduct what is referred to as a clearance search.
A clearance search is a search performed to ensure that a mark is available to use. A search can be cursory or comprehensive, depending on the demands of the brand owner. The difference between the two types of searches is usually the number and nature of trademark databases that are looked through by the party performing the search. There are a number of different trademark databases that can be searched so as to increase the likelihood of a mark being free to use, and this post aims to explain what the most popular of these are and the different aspects that each database covers.
IPIndia – Indian Trademark Registry Search
The Indian Trademarks Office maintains an online database of all the trademarks that have been applied for. The database has a publicly accessible search function, which any interested person can use provided they’re aware of the specific classification of goods and services they’d like their mark to cover. The search function of the Trademark Registry is free and publicly accessible. While the paragraphs below provide a brief overview of the Trademark Registry, a comprehensive guide on how to do an Indian Trademark search is also available.
The search functionality of the Trademark Registry’s database is fairly thorough and easy to use, as long as you know what Class of goods and services you’re offering. Class refers to the international standard classification (known as the Nice Classification) established by the Nice Agreement, an international treaty first established in 1957. India is not a contracting party to the Nice Agreement, but the Trademark Registry adheres to the Nice Classification for the purposes of classifying goods and services. There are 45 Classes (1-34 covering goods, and 35-42 covering Services), and all goods and services offered by the brand owner must be fit into one or more of the Classes depending on the business domain and variety of goods and services offered under the brand.
At this juncture, it should be pointed out for your reference that even if the search for a mark in a specific class comes up clean, there is always the scope for the owner of another mark in another class to oppose the registration of your mark on the claim that allowing your mark to be registered would dilute their brand. This is an additional factor to be kept in mind while you choose and search for your desired brand name.
The Trademark Registry’s search functionality allows you to perform three kinds of searches, as displayed in the screenshot below:
1. Wordmark: This is a text-based search for existing applications. This is the default search setting on the website. It has three further filters:
a.Starts with – This checks if the mark starts with the search term. It’s generally considered a good idea to break down your mark to see if there are similar sounding words.
b.Contains – This checks if there are marks that contain the search term as a part of any other mark in the specific class that you choose. This is by far the most comprehensive search mode, but the sheer number of results can often be overwhelming.
c. Match with – This checks for identical matches in the database. This is usually only done if you’re looking to do a very cursory check to see if there is an exact match to the mark you intend to use as your brand name.
2. Vienna Code: The Registry’s website allows you to search logo marks according to their Vienna Codes (an international agreement to standardise the representation of figurative elements of marks through a numeric system). This is the closest functionality to an image search similar to Google Images, but is more thorough since it allows you to look for similar depictions conceptually. This is prudent if you are looking to register a logo mark, but it is recommended to seek professional legal expertise for this as navigating the Vienna Codes can prove to be quite tricky.
3. Phonetic: This option allows you to check for similar sounding marks (in a hypothetical situation, the example of Rise and Ryze). This search mechanism will often throw up a number of superfluous results, but the depth it provides is more than worth it. Ideally, you would perform one of these after running your Wordmark search.
It is also recommended that you conduct a search in related Classes, to be absolutely certain that there’s no chance of you infringing someone else’s mark whose goods/services falls under a Class that either overlaps with your Class of goods and services or is a direct extension of the Class/es that you may have chosen or is most relevant to you (due to India’s first-to use trademark law). For example, a trademark for software would ideally be registered in both Classes 9 and 42 (covering its usage as a Product and a Service respectively). Depending on the specific usage of the software, there may also be other relevant classes. A tracking device and its associated software, for instance, may also require a search in Class 38 (pertaining to telecommunication services).
A cursory trademark search will usually cover only this database, and many brand owners often feel that a clean chit here is enough to go ahead with filing applications for their marks. However, the absence of a similar mark in this database doesn’t necessarily mean that there’s a guaranteed green light to use your mark. India follows a first-to-use system with respect to its trademark law, which means that a person who is the prior user of a similar mark that hasn’t been registered will not lose any of his/her rights merely because of his/her seniority in the usage of the mark. This is where it becomes important to conduct a thorough search of the other databases.
While it may be possible for any individual to conduct a search on their own, it’s always advisable to seek professional legal expertise to ensure that no stone has been left unturned (particularly when it comes to related Classes) in conducting a thorough search.
MCA Database – List of registered companies
The Ministry of Corporate Affairs (MCA) maintains a database of company/LLP (Limited Liability Partnership) names that have been registered with it. This is a relevant database to look at in light of the fact that India follows a first-to-use system. Thus, a person who has a company registered with a similar name to your proposed mark could potentially cause legal problems in the future, particularly if the company’s name has been in use well before your mark.
The MCA’s database doesn’t have the same search functionalities as the Trademark Registry, and thus searching this database is often a more arduous task. The MCA database only has basic text search options, but this is usually adequate to ascertain if a similar company/LLP name has been registered. The MCA database however, does allow a search to be limited to a particular business domain, but it is generally suggested that search terms are kept as wide as possible to err on the side of caution. It should also be noted that the MCA database does not provide class, business domain or category specific results. The search results are entirely based on the name/key words that you choose to feed into the search engine.
ROMARIN trademark database – International Trademark Search
The ROMARIN database is an international database of trademarks maintained under the Madrid System. The Madrid System is an international agreement comprising of two multilateral (signed by multiple countries) agreements – the Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the Madrid Agreement (1989). It is the primary international agreement to allow for the registration of trademarks in countries across the world. As of today, there are 90 countries (including India) that have signed on to the Protocol.
The Madrid Protocol allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application.” The World Intellectual Property Organisation (WIPO) maintains and administrates the database. It’s important to point out that this system only simplifies the application process. Individual countries may still apply their own specific rules and laws to grant protection to a mark.
The Madrid Protocol allows for a foreign entity to file a trademark application abroad and designate India, meaning that the Indian Trademark Registry will consider the foreign application. Indian Trademark law still applies, but the Madrid Protocol ensures that the foreign entity doesn’t have to file a specific application with the Indian Trademark Office.
A search on the ROMARIN database is definitely recommended to be absolutely sure that your mark doesn’t infringe on the rights of an international brand. The search functionality of the ROMARIN database is by far the most comprehensive, but is also the most difficult to use effectively. As always, it’s advisable to seek professional help to perform a thorough search of the relevant databases and interpret the results.
The main search page of the ROMARIN database looks like this:
To perform a search with relevant Indian results, the main fields you need to fill have been highlighted in the image below.
To clarify, the first highlighted field is where you enter your search term. The second is the relevant Class in which your business domain falls; and the third field should contain the letters ‘IN’, which is the international designation for India. You may also enter any other country code/s or international designation code/s in which you wish to file a trademark application/s.
As mentioned earlier, the ROMARIN database probably has the most comprehensive search functionality of all the databases discussed here, such as the option to perform searches for wildcards. For example, while searching for the word ‘track’, there is the option to search for any prefixes, suffixes, or replacement letters for the word (so you can obtain results like Speedtrack, Trackster, or Truck) using the appropriate search strings. It also has options to search for synonyms, fuzzy (misspellings) words, stemming (a search for applied would also return applying, applies, and apply), as well as numeric and range connectors. The ROMARIN search also has a natural language search option. Furthermore, there is also the option to weight results, meaning that you can sort the search results based on the exact kind of matches that you are looking for.
The sheer scope of the ROMARIN database can often be daunting, and extracting the maximum utility out of its extremely powerful search capabilities takes both time and practice. However, the payoff is usually worth the hassle.
ICANN and other domain name databases
Once you’ve checked the legal databases, it’s also advisable to conduct a search for a domain name. In today’s business environment, it’s very difficult for an organisation to make an impact in the market without an online presence. Various domain providers such as Whois, GoDaddy, and BigRock to name a few, provide search tools to search for a domain name. The ICANN (Internet Corporation for Assigned Names and Numbers), a non-profit organisation that coordinates maintenance of Internet namespaces, also provides a comprehensive search option.
As a general rule of thumb, if your desired domain name is free there’s a high probability that your trademark will be available as well. However, this is not an absolute rule (particularly in India, where internet penetration is still very low), and a domain name search should be done only after you’ve exhaustively searched the trademark databases. As with any other profession, it’s always prudent to seek professional help to ensure that your search has been conducted thoroughly.
Common law databases
As mentioned earlier, Indian trademark law recognises the rights of prior users of a mark even if an application for registration hasn’t been filed. Therefore, it’s always safer to conduct a search on various common law databases. This can include Yellow Pages, business directories, and publicly accessible search engines like Google, Yahoo!, and Bing. You can use this search to be conclusively sure that your mark is available to be used without any hassle, hesitance, or interruption from a third party.
There are a number of databases to look through to ensure that your mark is available to use, without the spectre of legal issues looming over your head. Most of these are publicly accessible and are quite comprehensive, which leads many brand owners to assume that they can conduct a search on their own and skip on (what they deem to be unnecessary) legal fees. However, this is a particularly risky approach, as combing the databases is only one aspect of the search. Once you have the data, interpretation of those results is equally (if not more so) important.
As with any skilled profession, it’s always best to consult experts to get a comprehensive and thorough report for your situation. The costs you save on legal fees by skipping a professional search may be minuscule compared to the costs you might incur if your mark turns out to be infringing somebody else’s. As mentioned at the beginning of this post, the search functions of the databases can also be used to ensure that others aren’t infringing on your mark. Having an attorney actively monitor these resources for potential infringements can turn out to be extremely worthwhile for your organisation, since you’ll be kept aware of such marks and can decide whether to take legal action to ensure the distinctiveness of your brand.
Finding a trademarks attorney to manage all aspects of your business’ marks is an important and often overlooked aspect of any enterprise, but making the right choice of engaging an attorney can benefit your organisation and brand immensely. At Ediplis Counsels, we offer a full suite of Trademarks related services, which can help secure and promote your brand value.