CLEARANCE SEARCH: The Key to Successful Trademark Registration
Recently, one of our clients approached us with a request to conduct a clearance search for a potential trademark. One of the first questions was, "Do we need a comprehensive check of the designation, or can we skip this part?"
Our response to such questions is always: "It’s better to check." But let's also discuss why a clearance search is highly recommended when considering trademark registration.
What is a clearance search?
A clearance search is a preliminary analysis that assesses the availability and registrability of the proposed trademark, minimizing the risk of costly legal disputes and protecting the brand's exclusivity in the market.
Why is the clearance search important?
1. Helps Avoid Legal Conflicts and Potential Litigation
Trademark laws prohibit the use of marks that could be confusingly similar to existing registered trademarks. When two trademarks resemble each other, customers may confuse one brand for another, which leads to a dilution of brand identity and, consequently, reduced customer loyalty. A clearance search identifies existing trademarks that may be identical or similar to the proposed trademark, helping the client better understand the situation.
It is also important to note that not every trademark that sounds or is written similarly—or even identically—will necessarily invalidate the applicant's trademark. In fact, the most important factors are similarity in name and the scope of goods and services represented by the trademark. If two similar trademarks are registered in different classes of goods and services, they may coexist without issue.
2. Maximizing the Chances of Registration
Developing a unique and protectable brand name ensures that the business stands out in the marketplace, attracting and retaining loyal customers. A clearance search confirms whether the proposed mark is original enough to be legally recognized as distinctive.
During the clearance search, the trademark is examined both phonetically and semantically. We also assess whether the trademark is potentially descriptive of the goods or services it represents or lacks distinctiveness. In other words, we conduct a preliminary review of all factors that could disqualify the trademark during the initial examination by intellectual property authorities.
An interesting example: the "Baby-Dry" trademark of Procter & Gamble, which refers to goods and services in the field of baby diapers, was initially rejected by the Office for Harmonization in the Internal Market (OHIM) due to its descriptive nature indicating the product's function. Interestingly, the European Court of Justice ruled in an appeal that the trademark was sufficiently distinctive, as it represents a phrase not commonly associated with diapers.
3. Ensuring International Protection
In a globalized business environment, many brands seek to expand beyond their local markets. Trademark rights are territorial, meaning a trademark available in one jurisdiction may already be registered in another. A comprehensive clearance search can include searches in multiple jurisdictions, ensuring the proposed trademark can be used internationally without infringing on foreign trademarks.
4. Avoiding Wasted Investments
Developing and launching a brand requires significant investments in marketing, packaging, online presence, and legal resources.
Without a clearance search, there is a risk that the brand may need to be rebranded due to third-party rights infringement or trademark denial, resulting in wasted resources and diminished returns on initial investments.
After a clearance search, the trademark may be adjusted by modifying its wording or adding a logo to the word mark. The client may also reconsider the countries in which to register the mark if a conflicting trademark is found in a particular jurisdiction. Finally, the client may focus on a highly specific list of goods and services for trademark registration.
For any business aiming to create a recognizable and exclusive brand, conducting a trademark clearance search is an investment in future stability and success.
Authors: Szymańska Julia, Erohovec Ekaterina
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