5 December 2011

Cutting the corners of a trade mark search?

As the global economic woes continue to hit the IP budgets of companies around the world would foregoing (some) trade mark searches provide savings or would it prove a false economy?

Like many questions, the answer to this is not black and white. There will always be limitations with trade mark searching - even when there can be perfect and instant record keeping and indexing, the Paris Convention and priority will always see to this. Nevertheless, practitioners would recommend a trade mark search in nearly all scenarios.

In the European Union, in addition to the Community Register there are 24 member states with a National Trade Marks Register plus the Benelux Trade Marks Register, covering Belgium, the Netherlands and Luxembourg, and the International Register. In total, 27 Registers. This is a considerable amount and it is hardly surprising that searching all of these Registers is costly. On top of this, unregistered trade mark rights could also exist from common law countries like the United Kingdom.

Taking a look at some of the costs available on websites of specialist companies shows the following figures for a word mark search in one class in all 27 Registers:
  • Belgian search company €5850 8 hour turnaround, no legal opinion
  • Belgian search company €3900 5 day turnaround, no legal opinion
  • Dutch search company €8805 10 day turnaround, with overall legal opinion
  • German search company €4950 6 day turnaround, no legal opinion
  • Luxembourg search company €4278 5 day turnaround, no legal opinion
  • Luxembourg search company €8007 5 day turnaround, with overall legal opinion
  • My firm (please forgive the self marketing) €3650 no legal opinion
These are meant as a comparison and you may not be comparing exactly apples with apples with the search packages available. The thing is to demonstrate that it's an expensive business, although it could easily be more expensive - contact your agents in 25 individual countries for searches and then see what the collective fees would be!

It makes the official fee of €900 to file an application (in 1-3 classes) at OHIM seem a drop in the ocean, although you may have associate's fees on top of that.

There are times when it is important to clear a mark thoroughly across all 27 Registers e.g. ahead of a big launch across the whole of the EU and it could be useful for a trade mark professional, whether in private practice or in-house, to entrust the searching with a single provider.

At other times, the costs are going to be prohibitive. Pragmatic - if not entirely risk-free - solutions need to be provided.

This blog will now take a bottom up approach. Risk evaluation would need to be handled on a case-by-case basis.

Firstly, to not bother searching. But this is inadvisable when the tools out there for basic searching are readily available, most notably TMView. This currently includes 14 of the 27 Registers (including 6 of the "Big 7", which I'll come to later). I had the privilege to travel to Spain to test this on behalf of project leaders OHIM and it is a simple tool with the "*" being used as a wildcard. It gives the opportunity to at least undertake identical and rudimentary searches of 14 Registers. Some countries not on TMView, most notably Germany, can be searched through their national Office's website if need be.

The good thing is this is all for free and available to anyone not just from Europe, but from Canada to New Zealand, Chile to Japan too.

Commercial platforms also exist for conducting these searches often with more Registers available through one search query on a single platform and with a more intelligent ability to find similar marks. The disadvantage is they cost money whether this is on a subscription or a pay-per-hit basis.

Identical and near identical searching is not going to catch everything but it will catch absolute killers and it's cheap. I say cheap instead of free as you must take into account your time involved.

Also cheap and easy to use is the tool provided by Markify, a commercial company based in Sweden. Whilst this only covers the CTM and US Federal Registers (you can disable the latter if need be), it is more intelligent than any identical/near identical search most of us can conduct ourselves and produces more extensive results. It doesn't claim it will find every similar mark, but it's another freebie available to anyone worldwide and a useful way of locating any possible problems. People are sceptical of free things. Their website states that they make money from their premium services (trade mark watching) and referrals to law firms. For the record, I do not have a commercial relationship with Markify.

After a Community Trade Mark application is filed, OHIM will automatically search its own Register and advise you of the results. If you've undertaken the previous steps, you may not learn of anything new.

Upon filing a Community Trade Mark application it is also possible to request "National Search Reports". These cost an additional €132 and prior to your CTM's publication you will receive search reports from the 11 participating Offices: Austria, Czech Republic, Denmark, Finland, Greece, Hungary, Lithuania, Poland, Romania, Slovakia and Spain. In practice, these are irregularly requested as you have already committed yourself to filing an application and incurred the main application fee. If these searches were available on a standalone, pre-filing basis they would represent outstanding value for money.

"EU5" is a common package of interest to CTM applicants. This search concentrates on the British, French, German, Italian and Spanish Registers in addition to the Community and International Registers (the "Big 7" I mentioned before). The simple reason is that 80% of oppositions are said to be based on rights originating from one of these Registers and these searches tend to be around 70-80% cheaper than the full "EU27" searches above.

"EU15" is a package focussed on the first 15 members of the EU - as opposed to "EU12", the countries that have joined the Union in the last two waves of enlargement. As Portugal has already slipped behind accession countries such as Slovenia, I feel this is an outdated way to determine a searching strategy. As the Registers across the whole Union are now mostly well tuned, a pick-and-mix approach (perhaps supplemented by identical searches of the remaining Registers) depending on a client's budget and industry is probably going to be more appropriate. The Cypriot, Greek and Maltese Registers are still in need of some modernisation, but Cyprus and Malta are often omitted as they have two smallest populations in the EU (Luxembourg being taken as part of the larger Benelux for this statement).

If your interests are only in a portion of the European Union you can concentrate your searches on these core countries. It is usually said that as soon as you have three or more EU countries of interest then it becomes cheaper to file a CTM over separate applications. Take this example, you only have a real interest in Austria, Benelux and Germany so your searches of these three Registers are comprehensive, but you are less thorough with searching the other Registers. Your CTM application is then opposed on the basis of a Greek registration, but you can convert your CTM application into applications in Austria, Benelux and Germany. Conversion is a bit of an insurance policy; you do not lose your original CTM filing date. It doesn't come particularly cheap, national applications must be filed at the usual rates and there are no discounts available just because there was a prior CTM and you will not get your CTM filing fees back. However, in this example, would the additional cost of filing nationally in three countries be cheaper than having searched completely across "EU27"?  This would probably be marginal, depending on the circumstances. But if you had, taking this example, searched "EU27" and found the killer Greek mark and then realised you would have to file separately in Austria, Benelux and Germany then you would only have saved the CTM filing fees. This would have worked out more expensive than omitting the full "EU27" search in the first place, filing the CTM and then converting the CTM.

It is a juggling act. Trade mark professionals are tuned to believe that if you don't search properly then don't go crying to them if it goes wrong. However, in this day evaluated cost versus risk is critical. In the conversion example where you don't search comprehensively, "justice" is served on your "laxness" as you face an opposition. But you still end up getting trade mark protection where needed - cheating the system? Or being creative?

There are no hard and fast rules to searching but as clients squeeze their attorneys for costs and in-house teams feel the pinch, whether you are in our outside of the EU, take a look at some of the free tools available. If you can familiarise yourself with them so it's not an inefficient and ineffective burden on you then the time and costs savings could prove very useful. Then when it comes to the searches that cost money, be creative - or seek creative advice.

I'll take a (shorter) look at US searching soon.