Anteriority of a brand
Prior art searches, which are a prerequisite for any trademark registration, must be carried out systematically.
Indeed, it is very risky to adopt a sign infringing on prior rights such as a registered or well-known trademark, a corporate name, a trade name, a domain name dedicated to the same sector of activity, etc…
There are several types of prior art searches that can be performed on the existence of identical trademarks, the existence of similar trademarks (whose similarities will be assessed from a phonetic or figurative point of view, etc.), company names and domain names.
The difference between an identical search and a similarity search is as follows: in the case of an identical search, we simply check whether an earlier trademark exists in the same field of activity, to the letter.
For example, in the context of a research on the name HELENE, the variants ELLEN or ELENE will not be researched as they are extremely close and would deserve to be analyzed.
In an analogical search, all variants are searched in order to determine, in a precise manner, whether there is a risk of confusion with an earlier mark.
Most often, it is similar marks that are opposed to an application and not identical marks.
A thorough prior art search allows us to detect all prior rights that may constitute an obstacle to the registration of a trademark (in particular trademarks, domain names and company names), and to assess the risk ofopposition from third parties.
In addition to the legal risk, which is analyzed in terms of the risk of confusion between the signs and the goods and services in question, the practical risk must be taken into account in the analysis of the search results.
For example, a detected prior trademark may be vulnerable if it has been registered for more than 5 years.
Further research on the Internet may or may not reveal the exploitation of the detected trademark. This research provides a more pragmatic assessment of the risk of incumbent response.
Moreover, if the search reveals several similar prior trademarks, the risk of reaction from the owners cannot be excluded even though they seem – on the surface – to coexist.
Indeed, owners may have entered into a coexistence agreement or negotiated a limitation on the wording of the goods and services of their marks in the context of negotiations prior to or concurrently with opposition proceedings.
Update on the lapse of a trademark
“The owner of a trademark who, without good reason, has not made serious use of it for the goods and services covered by the registration for an uninterrupted period of five years shall forfeit his rights.
Article L.714-5 of the Intellectual Property Code
The Bouchara firm assists you in particular in :
- Conducting prior art searches;
- Analysis of the results and the risk of third party reaction against your deposit;
- The preparation and registration of your trademark.