As more and more Chinese companies go abroad, many people are no longer unfamiliar with applying for registration of foreign-related trademarks. However, many companies have not paid enough attention to the prior rights inquiry of foreign-related trademarks. Prior trademark search refers to a trademark applicant's search for trademark applications and registered trademarks that have been recorded in the country of destination before submitting an application. The purpose is to find out whether there is a conflict of trademark rights.
Since trademark searches in the destination country can predict in advance whether there are identical or similar trademarks registered in the destination country, it can help domestic trademark owners avoid foreign-related applications from being rejected or rejected due to the appearance of prior trademarks. Objections, accordingly, can also reduce unnecessary costs caused by rejections or objections.
To inquire about the prior rights of foreign-related trademarks, you need to entrust a trademark agency to conduct it. The client provides the pattern of the trademark you are looking for, involving categories and products. The time required to conduct a trademark search varies from country to country, ranging from as short as one week to as long as 2 months.
After receiving the foreign query results, the trademark agency will analyze and issue a query report. The search report will show the status of previous similar trademarks. Some domestic enterprises believe that as long as an earlier similar trademark is discovered in a certain country, it is impossible for their trademark to be successfully registered in that country. This is a very wrong idea. The purpose of a trademark search is to anticipate and clear obstacles. The key thing to do is to conduct a careful analysis of the prior trademark:
1. Trademark pattern
Take word trademarks as an example. If the domestic rights holder’s trademark is “CYAST”, the query will find There are several very similar trademarks, and the risk of the trademark application being rejected in the destination country is very high. At this time, the right holder can graphically design the trademark or add a figure to enhance the distinctiveness of the trademark. The so-called "prior similar trademark" will no longer pose an obstacle.
In addition, if the search for the trademark "CYAST" reveals several prior trademarks starting with "CYA", the rights holder does not need to give up easily. Generally speaking, if there are multiple trademarks containing the same letter combination that can exist in the destination country, then the possibility that the queried trademark will exist with these earlier trademarks will also increase. Of course, the possibility that the trademark office of the destination country may reject the trademark cannot be ruled out, because these existing prior trademarks are likely to be finally registered through reexamination and defense.
2. Trademark owner The name of the trademark owner is also important information in the query report. There are two situations that need to be noted. First, if the searcher finds that the name of the owner of the prior trademark is almost exactly the same as his or her company name, it is possible that the searcher has found a trademark that was successfully registered in the country before. What you need to do at this time is to immediately change the owner name of the previously registered trademark in these countries, and then submit a new trademark application.
Second, if the owner of the prior trademark is the dealer or branch of the inquirer in the country, and the product categories and even the sub-items are exactly the same, it is likely that the trademark has been registered. At this time, it is usually necessary to first file a cancellation application for the prior trademark, or communicate with the squatter and sign a trademark transfer agreement.
3. Product categories and product items Generally speaking, it is best for the searcher to provide specific product names so that the trademark search can be more targeted. If no specific product name is provided, the agency will query the entire category. It should be noted here that query reports for some countries will display query results for other related categories. For example, the searcher wants to search for "land vehicles" in Class 12 of the International Classification, and the search report also shows a prior similar trademark in Class 37. At this time, you must not take it lightly and think that if the products are not in the same category, it will not pose an obstacle. Usually, if the country involves relevant categories during trademark search, the Trademark Office will also examine the relevant categories when reviewing the trademark application and issue a rejection.
On the other hand, if the trademark appearance, product categories, and product items in the prior trademark information are similar to what the searcher wants to apply for, and the country is an important country that the searcher does not want to give up. market, then the conflicting products can be deleted when submitting a trademark application. In this way, even if the application is rejected, arguments can be made in different product fields to increase the possibility of overcoming rejection.
4. Trademark application date, registration date, and expiration date. Not all prior trademarks have been registered. Usually, as long as the trademark application has received an official acceptance notice, it can be queried. Of course, in some countries, only prior trademarks after announcement can be found. Therefore, searchers will often see “trademark under review” and other labels in the status column of the prior trademark. At this time, although the earlier trademark application has not been completed, the filing date is earlier, which is enough to constitute an obstacle to the searcher's trademark application. For prior similar trademarks under application, searchers can first conduct trademark monitoring. If the trademark is rejected midway, domestic rights holders can immediately submit a trademark application to protect their rights as early as possible. If the prior trademark is purely a preemptive registration, then trademark monitoring can allow the monitor to obtain the announcement date of the trademark as soon as possible and raise objections in a timely manner, clearing the way for their own trademark registration.
Note: Some countries’ official databases are updated slowly, so the Trademark Office will cite expired or abandoned trademarks to reject subsequent trademark applications, such as the Philippines. When searching for prior trademarks in such countries, even if you find that the prior trademark is "invalid", you must be mentally prepared for your application to be rejected. Overcoming this type of rejection is very easy, just explain it to the authorities.
It should be noted that the prior trademark search is not omnipotent. It has two blind spots. The first is that during the period from the submission of the application to the official acceptance and registration of the prior trademark, the trademark cannot be searched. ;The second is that during the period from when the searcher receives the search report to when he submits his own trademark application, new prior similar trademarks may appear. Therefore, it is best for the searcher to decide whether to submit a trademark application as soon as possible after receiving the search report.
In addition, since the trademark search is only a preventive check for prior similar trademarks and does not check the registrability of the trademark itself, the searcher needs to pay attention to this issue when making a trademark application. , such as whether the trademark is distinctive.