Matthias Rößler - 27. May 2019

Trademark preliminary searches

It is strategically important for the success of a company to secure trademark rights. The intention should be to avoid a trademark dispute and one should thus ensure that no third-party property rights are infringed when going to market. One’s own product names should be different from those of third parties.

Identity Search vs. Availability Search

After checking whether the name can in principle be registered as a trademark (absence of absolute ground for invalidity), it is in any case advisable to carry out an identity search, i.e. a trademark search for registered and applied-for trademarks which comprise the same sign (word, logo, sound, etc.).

A more extensive availability search, in which it is checked whether there are similar registered and applied-for trademarks, is also highly recommended in order to find out at an early stage whether the (further) development of the planned trademark can lead to success for you as a potential trademark owner.

Depending on whether protection is to be obtained for Germany, EU-wide or worldwide, the search must be extended accordingly in order to reduce the risk of procedure on other trademark rights as far as possible.

Further additionally helpful searches may include searches for company names, work titles, domains, etc., to the extent that they conflict with the trademark registration or subsequent use.

Example: Trademark registration with protection for Germany

An examination is carried out for registered German trademarks and those which are still in the application process. In addition, the stock of internationally registered trademarks with protective effect for Germany is examined, as well as the stock of registered EU Community trademarks and those which are still in the application process.

Consequences of a trademark infringement

Trademark owners with an earlier trademark right can prohibit the use of their own sign. They can assert claim damages for this and prevent the sign from being registered as a trademark.

The consequences of a trademark infringement can occur suddenly, are time consuming and costly. Expected can be high procedural costs, costs for the conversion to another trademark as well as costs for the compensation of claims for damages.

Online research

In our chapter links we have summarized providers whose databases are helpful for general online searches. With that said, it is recommended to hire a search institute or a lawyer for an extensive search. The fees for such searches are manageable. In any case, we recommend discussing the result of your search with specialist lawyers.

Regarding Matthias Rößler:

Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.

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