Searching for pre-existing trademarks and patents—technically known as a "novelty search" or "prior art search"—is undoubtedly the only way to know if the trademark or patent you intend to register or file is similar or identical to others already in existence.
A prior art search is not a strict legal obligation for those filing a patent or registering a trademark, but it represents a strategic and fundamental preliminary phase.
In a globalized world and highly competitive markets, companies—especially those with a strong focus on innovation—protect their inventions, even when they may not commercialize them immediately.
This means that many inventions or innovations are not widely known because they are not yet on the market. Therefore, only by performing a search can one avoid investing significant sums in protecting an invention that belongs to someone else.
Nevertheless, experience shows that many people still underestimate this type of search, both because of its complexity and because most people do not seek professional help, believing that such a service falls under the remit of the Ministry of Industry and Trade.
What to know about trademark and patent searching
It is important to know that in Italy, patents and trademarks are granted without any prior substantive examination; therefore, from this point of view, the inventor is not guaranteed in the slightest.
In fact, it could happen that despite the registration of the trademark or the filing of the patent, the owner of the invention may commit one or more infringements, exposing themselves to serious risk.
Patents
A prior art search on a patent is aimed at evaluating whether one's innovation possesses two fundamental requirements for proper patenting: novelty and inventive step.
It is therefore important to know the state of the art in one's field of activity (the existence of patent rights belonging to competing companies) in order to properly identify one's innovation and the progress it represents: identifying the novelty resulting from one's research efforts.
Trademarks
Regarding trademarks, however, the search will be aimed at satisfying the requirement of novelty.
To this end, the search will identify the existence of other already filed or registered trademarks that are identical or similar to the trademark of interest within the relevant class of products and services, which could conflict with the searched mark, blocking its use or invalidating the registration itself.
What are the risks of not conducting a search?
The risks are extremely concrete: it is worth remembering that the existence of an earlier trademark or patent (identical or very similar to the one intended for registration or filing) leads to the risk of having to modify one's trademark (or patent) or, in some cases, even withdrawing it from the market, with potential claims for damages by the owner of the prior right for infringement.
This is without considering the potential losses related to investments already made: advertising materials, packaging, and everything else that will become unusable from that moment on, wasting the investment.
Trademark and patent search: how to start?
To initiate a preliminary search, several paths can be followed:
- At the UPICA (Ufficio Provinciale Industria Commercio e Artigianato - Provincial Office for Industry, Trade and Crafts) offices located at the Chambers of Commerce in every Province.
- By consulting the Database of the UIBM (Ufficio Italiano Brevetti e Marchi - Italian Patent and Trademark Office), verifying those already in existence.
- WIPO (World Intellectual Property Organization) database.
- EUIPO (European Union Intellectual Property Office) database.
Specifically, the EUIPO provides the public with free databases of European Union trademarks, allowing for the search of pre-existing marks that could be in conflict with the mark to be registered. The eSearch plus and TMview databases allow for the consultation of Community trademarks and designs registered with the EUIPO, as well as the retrieval of information on trademark applications and registered marks from national offices of EU countries, the EUIPO itself, and several international partners outside the European Union.
It is important to emphasize again, however, that this type of search offers no guarantee or certainty.
The Ministry itself warns of the uncertainty of data, which may be incomplete or unreliable. Even in the best-case scenario, a search carried out on the national database of the UIBM (Italian Patent and Trademark Office) offers no guarantee for the sole reason that it contains only Italian patents and trademarks, while missing all those filed in other parts of the world which could nonetheless be valid in Italy and destroy the novelty or have an impact on the national territory. At some UPICA offices, a more in-depth search can be performed by consulting at least the CD-ROMs relating to international and European patents available to the public. The aforementioned investigation is the cheapest but also the most insecure, both because data related to many patents and trademarks are missing from the public archives and because the search is normally set up incorrectly. These types of exploratory investigations are based on finding documents that contain a word indicated by the user in the title or description.
The critical issues of DIY
Certainly, a DIY search is still better than nothing, and in the event that it reveals an existing patent or trademark, it will save time and money. Conversely, if no prior art appears, it is not enough to feel secure. For a serious and thorough search, it is necessary to contact a specialized organization like ours, which uses international databases covering approximately 40 states. Such an investigation, carried out for a fee, is guaranteed at around 90%, and it is the only humanly possible method that can offer the inventor a nearly complete picture of the state of the art relative to their invention or an overview of identical or similar trademarks already registered by others.
It is evident that these types of investigations, while economical and useful, must be integrated with more in-depth searches carried out on an international scale. Furthermore, regarding trademarks—though the reasoning could correctly be extended to patents—should one wish to conduct a similarity search independently, all similar marks (even if only phonetically) must be examined, as trademark law is quite strict and effective even against a mark that is similar and confusingly similar to an earlier one (which is why a prior art search is often called a "similarity search").
It is always advisable, as a preliminary step, to identify the correct classification of the products and services for which you intend to use the trademark, and then set up the search, excluding irrelevant classes.
Trademark and patent search: is it really useful?
In the previous paragraphs, we have seen how it is possible to verify if a trademark or patent intended for registration is already present in the market in a similar form.
This is a non-obligatory preliminary investigation, but one that is highly recommended to avoid facing unpleasant situations in the future, such as the modification or withdrawal of the trademark in question. In fact, sometimes one might unintentionally use colors, words, or images that recall trademarks already on the market.
Therefore, to avoid having to change an entire strategy and wasting money on printing or investments already made, it is appropriate to carry out thorough checks.
Often, those about to open a new business simply search the web for similar entities, but this is a superficial method that can hardly indicate whether the path taken is correct or not. Furthermore, as mentioned earlier, searches carried out at the UIBM are not always exhaustive, as they do not take into account trademarks from other countries that are also protected in Italy.
Only through the consultancy of professional experts in this sector is it possible to analyze the market and the existence of brands similar to the one intended for registration.