Choosing a sign to distinguish one's business, products, or services is a particularly critical assessment for today's companies: on one hand, there is the need to identify an original trademark with high consumer impact, or a sign capable of conveying a positive and appealing message regarding the product; on the other, there is the physiological attraction to the high-sounding trademarks of the market "big players."
What is a trademark clearance search?
As is well known, a sign is validly registrable as a business trademark if it simultaneously possesses two requirements:
- novelty with respect to prior rights—of trademarks and/or other distinctive signs—belonging to others, whether registered and/or de facto;
and
- distinctive character, i.e., the concrete ability of the sign to indicate the entrepreneurial origin of the product/service and, therefore, to "distinguish" it from others present on the market.
In this article, we will focus on the first of these two requirements, novelty, the existence of which depends on whether or not there is an identical/similar sign (trademark, trade name, company or social name, domain names, advertising slogan, etc.) on the reference market (either registered or—under certain conditions—used).
This is normally ascertained through a clearance search by identity (aimed at tracing prior signs identical to the one of interest) or by similarity (referring, instead, to similar prior signs).
Why it is important to perform a clearance search
Although conducting a clearance search before adopting a sign to distinguish one's business, products, or services is not a mandatory practice, it is a recommended operation for several reasons.
Filing a trademark identical/similar to another trademark, filed/registered or used for identical/related products, could in fact expose the owner to the risk of an opposition to its registration, potentially frustrating the economic efforts spent on filing it.
Proceeding with a clearance search could also be useful to prevent the wasting of economic efforts in terms of advertising and promotion that would occur if the company discovered that the trademark used until then cannot be registered or must be modified in the face of a pre-existing right. Not to mention the risk of facing an infringement lawsuit.
Furthermore, since the logo design phase itself generates costs, what sense would it make to spend money to create a trademark only to be forced to abandon it because others have already filed an identical or similar trademark?
However, one should not think of a clearance search as a purely technical verification that will result only in a "green light" or a refusal to proceed; its results can be varied and nuanced. For this reason, it is important that its findings be read and analyzed by a professional in the field.
In fact, novelty is not spoken of in absolute and apodictic terms; the range of shapes, colors, combinations of letters and numbers, and the possible pairings of these, although numerous, are not infinite. Therefore, a slight margin of tolerance regarding the proximity of one sign to another must be considered admissible.
Such tolerance is particularly allowed where the mark of interest is a sign composed of terms, figures, colors, or shapes evocative of the product it is intended to distinguish, or descriptive of one or more of its qualities, or in the case where a sign is so widely used in a given market as to frustrate its initial distinctive character (an eventuality that, at its extreme, led to the theorization by German legal scholars of the so-called "Distantheorie" [Distance Theory]).
Based on the search results, the entrepreneur and the professional must collaborate to outline the best business strategy to, on one hand, respect the criteria imposed by law and not infringe third-party rights, and on the other, from a "business-friendly" perspective, prevent the choice of the mark from representing an obstacle to the development of a corporate line that may already be planned or even already launched.
On the other hand, if the trademark is the business card with which the company presents itself on the market, what sense would it make to be known by a trademark identical to that of others?
Factual search
A clearance search should not be limited to highlighting the presence of "registered" prior rights because, as mentioned, under certain conditions, signs that have been used on the market but are not covered by registration can also represent an obstacle to the registration of a trademark. For this to happen, however, it is necessary that the sign in question has achieved a certain degree of recognition among the public, or, in professional terms, possesses a so-called "notoriety that is not purely local."
For this reason, it is always advisable to supplement a clearance search carried out within national registers with a factual investigation into the use of similar signs within the reference market.
Such factual research is not only useful in an "extensive" sense, but can also be a valid element to exclude that one or more prior rights represent an obstacle to registration. In fact, referring specifically to the regulations on business trademarks, while the formal requirement for their validity is registration with the national Office, their substantive validity is subject to their actual use.
Therefore, any registrations emerging from the search that have been registered for at least 5 years and have not been the subject of genuine and continuous use in the 5 years preceding the search itself, will represent only an apparent obstacle to the registration of our trademark. Naturally, in this case, nothing will prevent the owner of the prior right from filing a formal opposition to the registration; however, it can be successfully overcome through the request for evidence of use of the trademark.
However, there are 2 exceptions to this rule
The first, as mentioned, is represented by titles registered for less than 5 years, for which the "tolerance" period granted by the legislator to "test" one's trademarks on the market has not yet expired, and for which it is not yet possible to plead revocation for non-use.
The second is represented by the category of so-called "defensive trademarks" (marchi difensivi), i.e., registered signs similar to a "principal" trademark whose registration is granted to the owner of said "principal" trademark for the sole purpose of strengthening and extending the sphere of protection and thus preventing phenomena of proximity (for example, some serial trademarks such as "Mio Vit," "Mio Trancetto," "Mio Fettina," "Mio Famiglia," "Mio Dessert" were recognized by case law as defensive of the "MIO" trademark, or "Miss Case" with respect to "Mr. Case," or again "BIC" and "BIG").
These signs, in consideration of their specific purpose, are exempted by law from the penalty of revocation for five-year non-use. Part of the legal doctrine also maintains that for defensive trademarks to represent an obstacle to the registration of a subsequent sign, it is not necessary for that (subsequent) sign to also interfere with the "principal" one, both due to the lack of a limitation on the protection of defensive trademarks in the text of the law, and because such an interpretation would render the institution futile, as its useful field of intervention is against the use of third-party signs that interfere ONLY with them and not also with the principal trademark.
To this exception, however, a correction must be added: the institution of defensive trademarks does not belong to all national legislations; it will be considered, for example, in Italy, France, and Germany, but not at the European Union level. In other words, the presence of an Italian defensive trademark will not represent an obstacle to the registration of a European Union trademark application.
Scope of the search
- territorial
As is known, industrial property rights are national rights, meaning they have effects limited to the national borders of the State in which they are registered. Therefore, a clearance search must consider signs registered/used in those territories where there is an intention to protect one's distinctive sign. The only exception is represented by the possible presence of well-known marks under Art. 6bis of the CUP (Paris Convention for the Protection of Industrial Property), i.e., signs that enjoy such foreign notoriety as to make it impossible for a sort of "link" not to be created in the consumer's mind.
It would be advisable, however, in consideration of the rapid mobility of workers and goods and the rapid expansion of the market, to already proceed with a search for availability in those territories where there is an intention to expand business in the short/medium term, especially if this is to be carried out by exploiting the six-month priority period.
- product-related
A further aspect of the relativity of industrial property titles is their connection with the products/services in relation to which they were filed/registered. The presence of a confusingly similar prior sign registered in Class 25 for clothing will not represent an obstacle to the registration of a subsequent sign for rice in Class 30.
Therefore, setting aside for a moment the cross-sector protection of well-known trademarks, the clearance search can be limited to the classes of products/services of interest. Here, too, however, it would be advisable to consider not only the classes of immediate use but also to expand to adjacent ones.
This is both in consideration of the flexible interpretation of the concept of "similarity between products/services"—whereby products/services belonging to different classes are also considered similar if they have the same nature or purpose, are intended for the same clientele or for the satisfaction of the same need, are fungible to a significant extent and, therefore, in competition with each other—and by virtue of the malleability of the market that pushes companies and entrepreneurs to range and move easily into adjacent production sectors. Think, for example, of clothing manufacturers that today also market bags, hats, shoes, perfumes, and jewelry.
All the aforementioned elements are just the tip of the iceberg of the assessments a professional must make to analyze the availability or lack thereof of a given sign on the market; to these must be added more "empathic" evaluations based on a complete knowledge of the subject and consolidated experience in the sector. We therefore suggest that anyone wishing to adopt a sign to distinguish themselves or their products on the market should consult a professional for a clearance search, avoiding "do-it-yourself" solutions that often have the sole consequence of merely delaying the moment of the expert's intervention.