Is your trademark “available”?

by | Feb 5, 2021 | Insights | 0 comments

We often get comments from clients saying that they have already checked that their trademark is available. Almost always this is based on a misunderstanding of how trademarks work.

Typically when a prospective client says that they have already checked that the trademark is available, they have made a Google search checking that nobody uses the exact phrase or word. If they find no exact matches, they conclude that the trademark is available. They may also have checked a trademark database (typically not all of the relevant ones) and seen that nobody has registered that particular trademark.

This way of thinking is probably based, at least partially, on how domain names work. Most entrepreneurs and small business owners have experience in registering a domain name. When you search for and register domain names, if nobody has registered exactly the same domain name you are looking for, it is available for registration. You pay the registration fee and seconds later the domain name is yours.

Many entrepreneurs seem to think that trademarks work the same way. If nobody uses the same name, or better yet, has not registered the same name, it is “available”. This is not the case. Another misconception is that if there is a prior identical registration, changing a letter or two will make the trademarks different so there is no problem. Finally, many entrepreneurs think that if they add another word or element to a previously registered name, the problem goes away. All of these are wrong. If a particular domain name is registered, a slight variation is all it takes for the variant to be registrable.

However, the owner of a registered trademark can prevent the use of a later trademark if there is “likelihood of confusion”. This does not require that the marks are identical. For there to be likelihood of confusion, it is required that the trademarks are at least “similar”. Similarity is assessed from phonetic, conceptual, and visual points of view. The problem with checking a trademark register is that a search typically only gives those prior trademarks that contain an exact match to the searched term, a bit like when checking for available domains.

As a rule of thumb, it is not a good strategy to either change a couple of letters from an existing trademark or just adding another word to it. Sometimes that might work depending on circumstances, but as a general rule, these kinds of tweaks are not sufficient.

Google searches are not sufficient for checking the availability of a trademark. Firstly, they do not reveal whether a particular trademark is registered or not. Trademark rights, at least in Europe, are generally created with registration, not with the use of the mark. Secondly, Google searches do not give sufficient information about possible similar names that might also be problematic. Finally, there might be registrations for trademarks that are not yet in the market, so they would not be covered in a Google search.

When checking the availability of a trademark, it is necessary to search for not only identical but also similar trademarks. The easiest and cheapest way to do that is to use the EU trademark office’s tool called “TmView“, where it is possible to do a “fuzzy” search. Fuzzy search also gives results for similar trademarks. Remember, however, that interpreting the search results requires legal skills, and it may be that even the fuzzy search does not reveal all possible obstacles.

Coming back to the domain name registration, while you may have been able to register an “available” domain name, it does not mean that you can actually use it freely for commercial purposes. If somebody owns a similar trademark, and you use the domain name for commercial purposes with respect to the same or similar goods and services for which the trademark is registered, you may be infringing that trademark.

So for both domain names and trademarks, the question of whether it is “available” is not as simple as entrepreneurs often think. The fact that nobody uses or has registered an identical name does not mean that it is available.

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