Trade Mark Search and Monitoring Services
Trade Mark Search Service
Search and monitoring services, when conducted properly, can prevent refusals, disputes and infringements of trade marks.
These are activities that require experience and time and, above all, knowledge of the national and international regulations governing trade marks and industrial property rights in general.
The professionals at our firm use the best free and paid international databases to conduct searches and monitor trade marks with the greatest possible reliability.
Prior Rights Search Conducted by a BIESSE Professional
A BIESSE professional can conduct identity or similarity searches: the former is aimed at identifying whether there exist active registrations or applications for registration, or third-party rights, covering the exact trade mark intended to be registered in the countries and classes of interest; the latter verifies the existence of active registrations or applications for registration, or third-party rights, covering similar trade marks that could nonetheless give rise to confusion from a phonetic or conceptual standpoint.
Objectively, no prior rights search (even when conducted at the highest levels of accuracy and thoroughness) can offer absolute guarantees as to the novelty of the trade mark to be registered, not least because searches do not identify unregistered trade marks.
A duly conducted search can, however, considerably reduce the risk of encountering unfortunate instances of infringement of pre-existing rights, with consequent disputes, damages and compensation.
A prior rights search is used to verify that there are no obstacles to the use and registration of the trade mark one intends to adopt or register.
Such obstacles may consist in registrations or applications for registration of identical or similar trade marks claiming identical or similar goods or services, design registrations, internet domain names, company names and/or copyright.
The Italian Patent and Trade Mark Office (UIBM), as well as many foreign offices, does not carry out any examination of novelty in respect of the trade mark to be registered; it is therefore possible that both the registration and the use of the trade mark may be challenged.
The European Union trade mark office (EUIPO), upon filing, carries out a prior rights search included in the registration fee, which consists of a search of the EU trade marks database only. Accordingly, all national applications or registrations valid at the time of filing the registration application are excluded from this search.
The office merely notifies the owners of EU registrations identified in the search of the filing of the EU registration application; it does not carry out any examination and, if no opposition is filed, it grants the registration.
It is therefore possible that even an EU trade mark registration may be challenged, as may its use.
Furthermore, the use and registration of a trade mark may also be challenged on the basis of other rights, such as internet domain names, company names, design registrations, PDO or PGI registrations, etc.
Defining a correct preliminary search strategy is therefore not as straightforward as it may appear.
Prior rights searches are conducted on the basis of keywords in Italian and foreign databases of interest.
There are free databases that allow for a first significant screening, but they are not always up to date or easy to consult. These include the databases of the UIBM, EUIPO and WIPO.
Those who conduct prior rights searches independently often underestimate the fact that each search is always underpinned by a strategy, which depends on the type of trade mark, the sector of use, the countries of interest, etc., and that it is not sufficient merely to check whether identical trade marks are registered in the countries of interest.
The professionals at BIESSE use paid databases that ensure rapid and more reliable results.
Searches conducted by BIESSE are always accompanied by a commentary that highlights any risks associated with filing and, where the client nonetheless wishes to proceed, suggests the appropriate strategy.
When examining applications for trade mark registration, most competent offices, including the Italian office (UIBM) and the EU office (EUIPO), do not carry out any prior rights searches. As a result, new trade marks obtain registration even though there are already registrations for identical or similar marks covering the same or similar goods or services.
Chambers of Commerce and the bodies responsible for the registration of internet domain names also do not carry out any prior rights searches and/or checks.
It is therefore the responsibility of trade mark owners to monitor databases and to take steps to oppose the registration of new trade marks, internet domain names and/or company names that are identical or similar to their own distinctive sign, in accordance with the applicable procedures.
The watching service allows the owner of a trade mark to be informed promptly of the filing of registration applications for trade marks, domain names and company names that could potentially interfere with their own distinctive sign, in the countries, databases and sectors monitored.
Timely action, through the sending of cease-and-desist letters and/or the filing of administrative oppositions, makes it possible to block third-party registrations swiftly and at reduced cost.
The watching service may be activated in relation to:
i) the filing of applications for the registration of trade marks in Italy and abroad, in the classes of interest;
ii) applications for the registration of internet domain names;
iii) enrolments of companies and firms with Italian and foreign chambers of commerce.
Applicable regulations provide that:
- Signs that are identical or similar to a sign already known as a company name, trade name or business name, business sign or domain name used in economic activity, or any other distinctive sign adopted by others, as at the date of filing of the application, may not be registered as trade marks.
- It is prohibited to adopt as a company name, trade name or business name, business sign, domain name of a website used in economic activity, or any other distinctive sign, a sign that is identical or similar to another party's trade mark.
This is the so-called principle of the unity of distinctive signs. When deciding to adopt a sign as a trade mark, company name, business sign or domain name, it is important to verify its availability not only within the register of registered trade marks.
