Prior trademark search

Prior trademark search

UntitledBy Rodrigo Sammut

The application of a trademark carries the inherent risk of rejection on absolute grounds (descriptive mark, lacking distinctiveness, against public order) or relative grounds (existence of prior rights that are identical or similar). This uncertainty jeopardizes the registration of a trademark and the marketing-advertising investments necessary to launch a new product or service.

It is therefore essential to perform a preliminary search in order to analyze the registrability of the trademark since in most countries, including Chile, the rule of “first to file” applies (the right is granted to the one who first apply for the trademark), different from the Common law rule “first to use” (right from the date of first use of the mark). Therefore, the trademark grants the owner an exclusive right to use a sign for certain goods and services, against third parties who may not use it except with the consent of the trademark holder.

The previous analysis must take into account the trademark and the goods and services of real interest.

The first step is to investigate whether a mark is descriptive for the goods and services applied for, as it informs of its quality or origin for example. If it is descriptive, then the mark will be rejected. This analysis has to be made case-by-case, taking into account the goods and services for which the mark is used. Therefore, it is important to choose distinctive signs so to increase the probability of registration.

The second step is to investigate which signs are already applied for and/or registered, for identical or similar goods and services. This overall analysis takes into account the principle of specialty, which means that the same trademark can coexist for different goods and services, provided that these goods and services are not identical or similar. For this reason, in Chile, the identical registered trademark CONO SUR, owned by different companies, coexists for wines (Class 33) and insurance services (Class 36), without a likelihood of confusion in the mind of the consumer.

Therefore, to minimize the risk of rejection of registration of a trademark, you should perform this analysis together with your IP lawyer.

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