Why the Patent Office does not check your trade mark

A registered trade mark feels like security. It only is to a limited extent – and anyone who does not know the difference finds out through a cease-and-desist letter.

What is examined and what is not

On registration, the Patent Office examines absolute grounds for refusal: lack of distinctiveness, descriptive indications, capacity to deceive. Whether an earlier trade mark of a third party stands in the way is not examined. Registration is therefore no proof that the trade mark does not infringe the rights of others. Opposition, an application for cancellation and an action for an injunction remain possible.

What a search achieves

An identity and similarity search shows earlier trade marks in the relevant registers – national, EU-wide, international – and in the classes of goods and services actually affected. On top of that comes a look at company names and domains: unregistered signs, too, can give rise to rights.

The timing

The best moment is while the name, logo, domain and printed materials can still be changed. After that, the cost of a conflict does not rise in a straight line but in leaps – rebranding hits the website, signage, packaging and contracts all at once. In a case of similarity conflict, the question is rarely whether it can be resolved, but how expensive the solution will be.