Trademark search: how to check if the name is free?

Have you come up with a good name for your trade mark (TM)? Do not rush to rejoice! First make sure that the name is not registered yet. In this article, we will tell you how to do atrademark search on and check if the name you have chosen is free.

Section 1: Why do a trademark search?

Checking the name of your future trade mark (TM) is the most important step before registering it. A trademark search on the website will help you avoid many problems in the future and save you time and money. It will help you to make sure that yourtrademarkis unique and minimise risks.

1.1 Avoid registration refusal

Imagine: you have spent months developing an ideal name for your business, created a logo, launched the first advertising campaigns, and suddenly you get a refusal to register your trade mark from UkrNIPO. The reason: your name is similar to an already existing one. This is not just a nuisance, it’s a waste of time, money and effort. A trade mark search will help you avoid this nightmare.

Why can UkrNOIVI refuse registration?

UkrNOIVI is responsible for the protection of intellectual property rights. One of the key criteria for registration of a trade mark is its uniqueness. If your name is very similar to an already registered trade mark for similar goods or services, there is a high risk of refusal. This can happen even if you were not aware of the existence of such a trade mark. Ignorance of the law does not exempt you from liability.

How does a trade mark search protect your investment?

• Identifying potential conflicts: A trade mark search allows you to identify similar or identical trade marks at an early stage, before you invest heavily in brand development.
• Assessing the likelihood of successful registration: A professional trade mark search can help you assess the chances of successful registration of your trade mark and avoid unnecessary costs.
• Ability to adapt the name: If the search reveals potential problems, you can change the name or its graphic representation in time to avoid refusal of registration.
• Saving time and resources: It is much cheaper and faster to check the name in advance than to correct errors after a refusal and go through the registration procedure all over again.

A trade mark search is not an expense, but an investment in the secure future of your brand. Checking the name means protecting your business from unpleasant surprises and financial losses.

1.2 Avoiding conflicts and protecting your reputation

Successfully registering a trade mark is no guarantee of a peaceful life. Even if your trade mark is officially registered, using a name similar to an existing one can lead to serious conflicts with other rights holders, which can have devastating consequences for your business.

What are the risks of using a similar name?

• Lawsuits and financial losses: Owners of registered trade marks have the right to sue to stop the use of a similar name and seek damages. Such litigation can be lengthy, exhausting and extremely expensive.
• Reputational damage and loss of customers: Name similarity can confuse consumers and result in the loss of customers who may mistakenly choose a competitor’s product. In addition, litigation and public scandals surrounding your brand name will negatively impact brand reputation and undermine consumer confidence.
• Forced rebranding: In extreme cases, a court may order you to completely change the name and logo of your trade mark. This means not only additional costs, but also the loss of money already invested in the promotion of the previous brand.
• Loss of time and energy: Instead of focusing on business development, you will have to spend time and energy on solving legal problems.

 Atrade mark search is your insurance against conflicts:

A thorough trade mark search can identify potential conflicts at an early stage and avoid the aforementioned problems. A name check is a necessary step to protect your business and preserve its reputation. It’s an investment in the stability and success of your brand. Don’t risk your business – make sure your brand name is truly unique.

Section 2: Ways to find a brand name

So you understand the importance of a brand search. But how exactly to conduct it? There are several ways to check the name of your future trade mark for uniqueness. In this section, we will look at the available options, their advantages and disadvantages so that you can choose the best approach for your business. From a simple online search to professional expertise, find your way to secure registration.

2.1 Online search in the UkrNOIVI database

UkrNOIVI database is your first assistant in searching for a trade mark. This free online service provides access to the register of trade marks of Ukraine and allows you to quickly check the name for similar or identical designations.

How to use the UkrNOIVI database?

1. Go to the official website of UkrNOIVI.
2. Find the “Databases” section and select “Trade Mark Database”.
3. Enter the keywords of your trade mark in the search field. You can use different search criteria: exact name, part of the name, class of goods/services.
4. Analyse the search results. Pay attention to similarity of names, classes of goods/services and status of trade marks (registered, pending, etc.).

Advantages of online search:

• Free access: You can use the UkrNOIVI database for free, making it accessible to everyone.
• Speed and convenience: Online searches take minimal time and effort. You can search from anywhere you have access to the internet.
• Initial assessment: Online searches provide an initial indication of the availability of similar brands and risk assessment.

Limitations of online search:

• Superficial analysis: Online searches do not always take into account all the nuances of law and case law.
• Lack of expert judgement: You analyse the search results yourself, which can be difficult for people without a legal background.
• No guarantee of successful registration: Even if the online search does not find similar trade marks, it does not guarantee that UkrNOIVI will register your trade mark.

The online search in the UkrNOIVI database is a useful tool for an initial check of the trade mark name. However, for a more in-depth analysis and risk assessment, it is recommended to seek professional expertise.

2.2 Professional TM search

While an online search in the UkrNOIVI database is a useful tool, it is not always sufficient to guarantee protection of your brand. A professional TM search conducted by qualified patent attorneys offers a more in-depth analysis and takes into account all legal nuances.

What does a professional search involve?

• In-depth analysis: Patent attorneys conduct a detailed analysis not only on the exact name, but also on similar sounding and spelling designations, taking into account various transliterations and translations.
• Verification across all classes: Professional expertise covers all classes of the International Classification of Goods and Services (ICGS), which allows to identify potential conflicts even in unexpected areas.
• Case law: The experts take into account not only registered trade marks but also case law, which allows us to assess risks even in cases where the names are not identical but can be recognised as confusingly similar.
• Advice and guidance: Patent attorneys provide professional advice and guidance on the selection and registration of a trade mark, taking into account all legal aspects.

Advantages of a professional search:

• Risk minimisation: A professional TM search significantly reduces the risk of registration refusal and conflicts with other trade mark owners .
• Saving time and resources: Although professional due diligence has its cost, it helps you avoid much higher costs associated with litigation and rebranding.
• Confidence in your decisions: Professional due diligence gives you confidence that your trade mark is protected and does not infringe on the rights of others.

A professional TM search is an investment in the security and success of your brand. If you are serious about protecting your intellectual property, contacting patent attorneys is the best choice.

Section 3: How to conduct a proper TM search?

Knowing the importance of brand search and the methods available is only half the battle. To maximise effectiveness, you need to understand how to conduct this search correctly. In this section we look at key aspects and practical tips to help you optimise your strategy and get the best results. From identifying keywords to analysing the results, we will reveal the secrets of successful brand search.

3.1 Defining keywords

The first step to a successful brand search is to identify keywords. The right keywords will help you find all potentially similar trade marks and avoid unpleasant surprises in the future.

How do I identify keywords?

• Break the name down: Break your brand name down into individual words and their parts. For example, for the name “SuperCoffee” the keywords could be “super”, “coffee”, “supercoffee”.
• Consider synonyms and abbreviations: Think about what synonyms or abbreviations could be used for your brand name. For example, a synonym for “SuperCoffee” might be “excellent coffee”.
• Use different spelling variations: Be aware of possible spelling errors and different transliterations. For example, “SuperCoffee” could be written as “SuperKoffee” or “SuperCoffee”.
• Think about associations: What words are associated with your brand? For example, for “SuperCoffee” it might be the words “energy”, “boost”, “morning”.

Using only the exact name of your trade mark in a search may not give complete results. Similar brand names may contain only part of your brand name or use synonyms. Therefore, it is important to use the widest possible range of keywords.

Example:

You want to register a trade mark “Green Leaf Tea”. Key words for your search can be: “green”, “leaf”, “tea”, “green leaf”, “leaf tea”, “green tea”, “green tea”, “green”, “leaf”, “tea”, “green leaf”, “tea leaf”, “green tea”, “green tea”.

Getting your keywords right is the foundation of effective brand search. The more keywords you use, the better chance you have of identifying potential conflicts and avoiding future problems.

3.2 Searching by different criteria

Identifying keywords is an important step, but it is equally important to know exactly how to use those keywords when searching for a brand name. Searching by the exact name alone may not be enough. Consider the various criteria that can help you conduct a deeper and more effective search.

Search criteria:

• Search by exact name: This is a basic criterion that allows you to find identical brand names. However, it does not take into account possible spelling variations and similar names.
• Search by name parts: This criterion allows you to find trademarks that contain part of your name. For example, if your name is “Golden Apple”, a search using the words “golden” and “apple” separately may reveal the trademarks “Golden Fruits” or “Red Apple”.
• Similar-sounding search: Some names may sound similar even if they are spelled differently. For example, SunShine and SanShine. Consideration of phonetic similarity is an important aspect of the search.
• Translation search: If your trade mark contains foreign words, be sure to search for their translation into Ukrainian.
• Image search (if there is a logo): If your trade mark has a graphic element, it is important to check if there are similar logos.
• Search by ICTU classes: The International Classification of Goods and Services (ICGS) is a system that categorises all goods and services into 45 classes. Checking the relevant ICDS classes will help you identify brands that may conflict with yours, even if the names are not identical.

For best results, it is recommended to combine different search criteria. For example, you can combine a search by parts of the name with a search by the relevant ICTU classes.

Using different search criteria is the key to effectively searching for a trade mark and minimising risks. The more thorough your search, the greater the chances of successful registration and protection of your brand.

3.3 Analysing the search results

A brand search has been conducted and you have a list of results in front of you. But how to decipher this information and understand whether there is a threat to your trade mark? In this subsection, we’ll learn how to analyse search results and identify potential risks.

What to look for:

• Degree of similarity: Are the trade marks found identical to yours or only similar? Even minor similarities may be a reason for refusal of registration or a conflict.
• Classes of goods/services: What classes of ICTU do the found trade marks belong to? If they are the same as the classes for which you plan to register your trade mark, the risk of conflict is much higher.
• Trade markstatus : Check whether thetrade marks found are valid. Trademarks that have expired do not pose a threat.
• Territory of validity: Where does the protection of found trade marks apply ? If you plan to operate only in Ukraine and the found trade mark is protected only in another country, the risk of conflict is lower.
• Reputation of the trademark owner : If the owner of the found trade mark is a large and influential company, it has more resources to protect its rights, and the risk of conflict with it is higher.

How to interpret the results?

Analysing the results is not just a matter of looking for identical names. It is a comprehensive risk assessment that takes into account all the above-mentioned factors. If you are unsure, it is better to contact an intellectual property specialist for professional advice.

Proper analysis of the results of a trade mark search is an important stage that will help you make an informed decision about registering your trade mark. It will minimise risks and ensure that your brand is successfully protected.

Conclusion

A trade mark search is not just a formality, but a necessary step to protect your brand and investment. A thorough and nuanced search can help you avoid registration refusals, prevent conflicts with other rights holders and preserve the reputation of your business. Use a variety of ways trademark search, from online databases to professional expertise to make sure your name is unique. Remember, a properly conducted trade mark search is an investment in the future of your brand.

For more information on choosing and protecting your trade mark, we recommend reading the following articles:

• “How to choose a memorable name for your trade mark: legal advice“
• “Trademark and domain name: how to protect your brand on the Internet“