FAQ – Trademark Searching in Europe

The parameters for searching for prior rights in the European Union have changed significantly in the last decade or so. The European Union Trademark (EUTM, previously known as CTM) became a reality in 1996, and has since then proven to be the registration of choice for trademark owners. The European Union has been expanded in 2004 from 15 to 25 countries, in 2007 to 27 countries, and most recently to 28 countries in 2013, which compounds searching issues. The future promises further expansion, making prudent a rethinking of how to search and “clear” trademarks in Europe.

Is it possible fully to clear a trademark for use throughout Europe prior to filing a EUTM application?

Prior rights can be in the form of prior registrations in 28 countries, and in certain countries company names and even “common law” (unregistered) rights. Trademark registrations are typically subject to a use-requirement more than five years old. Trying to find all relevant prior rights and determining whether these could be a hindrance to the use and/or registration of a given trademark can involve a significant amount of time and resources. In any case the EUTM rules are skewed in favour of the inattentive prior rights holder, such that prior rights can be a problem unless the prior rights holder has knowingly acquiesced to the use of the EUTM for 5 years.

What kinds of searches are there for Europe?

There are several types of trademark searches, including knock out (identity) searches, fuzzy searches, clearance searches, in-use searches, and custom searches.

What are “knock out” or “identity searches” used for and what do they cost?

Identity searches are appropriate for checking whether the identical mark is already registered, i.e. for the purpose of rejecting rather than adopting a mark. In most cases identity searches cannot be relied on for other purposes, because of the limited scope of the search. European identity searches are limited in scope, inquiring whether the identical mark in a particular class is registered in the national and regional European trademark registers of the 28 EU Member States, as well as the EUTM register and the International Register and the .EU domain name register. If there are few hits, full file information is included on the hits. If there are more than a few hits, then the full file information will be limited and explained in the report. The price for the EUTM and 28 countries is € 450. A knock out search covering the EUTM only is € 99 with full report.

What are “fuzzy searches”?

Fuzzy searches are expanded identity searches, where the computer goes beyond identity and also finds somewhat similar marks. Like identity searches, these should be used to reject marks, rather than adopt a mark. A good fuzzy search covering the EUTM and the individual EU countries is TMView, located at the EUIPO (the EUTM authority) website. A fuzzy search with report usually costs € 700-900.

What are “clearance searches” and what do they cost?

As the name suggests, “clearance searches” attempt to determine whether a trademark can be used in the territory without infringing third party rights. This is best accomplished by asking experts in each of the 28 relevant jurisdictions for an opinion as to the registrability of a mark, including searching not just for the identical mark, but also for confusingly similar (non-identical) marks, as well as other registration hindrances such as company names. The cost of this can be about € 500-1000 per country, or about € 15,000-28,000 for the entire EU.

What does NJORD typically recommend as a start?

We typically recommend a clearance search of the EUTM register coupled with identity searches of the national registers. We also check for use of the marks mentioned in our report. The cost of this is about € 1,000.

What kinds of “in-use” and “customized searches” does NJORD provide and what do they cost?

For in-use searches we use specially trained law students and other staff to check websites and make anonymous telephone calls to third parties and/or the trademark owner. The costs vary depending on the product and the market, so we charge by the hour. Such in-use searches can be “capped” (see below), e.g. at € 400 per mark, and “custom searches typically from € 1,000 to 3,000 (sometimes significantly more). For customised searches we design a search strategy with various inquiries and reports which include recommendations. For instance,

identity searches of one or more trademarks, and if there are no identical rights, then full clearance searches of the EUTM register and three key countries using local counsel. Report with recommendations for further searches, if any.

“capped” searching, where we search within a given budget and make recommendations for further searching, e.g. checking whether one or more marks are in-use.

domain name searches on a group marks, if these are available, then follow up with trademark identity searches. Thereafter identity searches in other relevant countries and regions, if applicable. Finally clearance searches, including in-use inquiries, often tiered such that we try to clear one or more marks before the others.