Knowing how to do a trademark search helps you find potentially conflicting marks that are identical or similar to your brand, the status of those marks, and whether your logo or brand name is likely be considered distinctive enough for trademark approval.
This article will explain what a comprehensive trademark search will look like for your trademark registration application. We will start off with the fundamentals of trademark search, what a trademark search is, how to do a trademark search on NIPO Sri Lanka trademark database, where to check for common law trademarks, what makes a mark confusinly similar. We’ll also discuss some common DIY trademark search strategies you can use.
What is a trademark search?
Trademark search is the process of searching through both existing trademarks and pending applications in trademark registers, and flagging similar marks to ascertain the avaiability of a brand name or logo for legal protection. A search not only check for existing registered trademarks, a search also uncovers common law trademark rights.
A common law trademark is an unregistered trademark that has superior legal rights established under common law through the actual use of that mark in selling goods or services in a limited geographical area. However Intellectual Property Act No.36 of 2003 grants exclusive right to a mark to the party that files first for trademark registration or claims earliest priority based on the earlier trademark filing in another country. Regardless, when you do a trademark search, you should check for both registered and unregistered brands to avoid opposition claims by third parties.
How to do your own trademark search in Sri Lanka?
1.Decide the NICE class applicable for your trademark
The first step to conducting a trademark search in Sri Lanka is to identify the international class applicable for your proposed trademark under NICE classification.
Here is how you can determine the correct international class for your goods or services.
1. Search “WIPO NICE classification” on Google and visit the World Intellectual Property Organization (WIPO) website.
2. Next, access the NICE classification publication.
3.Click on search tab and type in your specific category i.e software application. Remember not to go too broad or too narrow into your product category.
Untick services if you’re are offering only goods and vice versa to refine the search criteria.
Use operators like “AND,” “OR,” and “Exact Search” to customize your search criteria and click on search.
4. Now the search results will return a list of classes with highlighted examples of product items including the words in your search term.
5. Next, look for the highlighted product items to determine which international class best represents your goods or services. This is the class you should select when filing your trademark application. Remember, you might want to include one or multiple classes in your application, depending on plans to expand your product line.
2. Search for confusingly similar marks under the selected class(es).
To qualify for trademark protection, your mark must be inherently distinctive. This means it must be a unique mark with a unique name or a unique logo capable of creating a unique commercial impression in the selected class of goods or services.
The distinctiveness of a trademark is assessed based on its visual, phonetic, and conceptual characteristics compared to existing registered marks in the same class. If you see any visual parallels, phonetic similarities, or shared themes or ideas, NIPO Sri Lanka will reject your trademark application. We advise our clients to pair their brand name with a distinctive logo when their word mark sounds similar to an existing mark. In the same way, if your logo resembles another brand’s logo, simply include a notable phonetic distinction in your word mark to counterbalance the visual similarities.
Where to search trademark names?
When checking for registered and unregistered brands, below is a list of places you want to include in your trademark search.
Searching NIPO Sri Lanka trademark database
To check for registered trademarks in Sri Lanka, visit the National Intellectual Property Office (NIPO) in person. You’ll need to pay a trademark clearance search fee. An officer will provide a search report indicating whether similar marks exist. If similar marks are found, the report will include a list of pending and registered trademarks in Sri Lanka that resemble your proposed mark.
Foreign trademark databases
If you have plans to expand into foreign markets, be sure to search the national and state trademark databses and online trademark journals of those jurisdictions, i.e, USPTO search, UKIPO, EUIPO trademark search, and WIPO for trademark search wordwide.
Business name registries (eROC name search)
Look up the eROC name search for names of companies already registered with the Registrar of Companies. This is especially important if you plan to use the same brand name for your company name.
Check for common law trademarks online (Common law searching)
You can search for trademarks on the internet using social media handles, Google Image Search, and Google Business Profile(GBP). These are essentially unregistered marks that are already used in commerce.
Benefits of a trademark search
Avoids the likelihood of confusion
A trademark search will inform you if your proposed trademark is too close to a mark already active on the trademark register. The main benefit of doing a trademark search is that it helps you avoid a refusal of your trademark registration for lack of distinctiveness or potential conflict with existing trademarks.
Lower the risk of trademark opposition
When you identify potentially conflicting marks early on, you can avoid any third-party oppositions against your mark during the publication stage.
Reduce the risk of trademark claims
You can also minimize the risk of receiving a cease and desist notice or facing legal action for trademark infringement, as a trademark search identifies upfront any existing marks that are identical or confusingly similar to your mark. Without a search, you may unknowingly apply for a conflicting mark and be forced to rebrand later.
Expedite trademark registration
Doing an accurate trademark clearance search before preparing and filing a trademark application increases your chances of successful registration and avoids delays caused by objections or oppositions, leading to a quicker trademark approval.
Should I retain a registered IP agent to do the trademark search?
NIPO Sri Lanka does not have an online trademark databse the public can access on its website. Therefore doing a search for trademarks active on the register requires a physical visit to the NIPO trademrk division. If you do not have time to do all that on your own, we can work with a registered IP agent to do the trademark search for you. IP agents have more experience in using the search language and trademark search tools to discover if there are any registered trademarks or common law trademarks that are potenticialy in conflict with your mark.
What to do if proposed trademark is already taken or in use?
If at the end of your search you find out that your brand name or something similar is already registered or in use, there are still a several routes available to you.
The identical mark is already registered in the same class
If your exact mark is already registered in the same class of goods or services, your best option is to go back to the drawing board and make slight adjustments that help your mark be legally distinct. Registering the same or a confusingly similar mark in the same class will almost certainly result in refusal of your application.
The conflicting nark is slightly similar but in a different class
Sometimes the mark you’ve found isn’t an exact match but not so distinct from your mark that it is spelled differently but sounds similar. A registered IP Agent can help you assess how likely your mark will be considered “confusingly similar” by reviewing how your mark is pronounced and understood in context. Each case is different, and it’s worth getting professional input before you file your trademark.
The conflicting mark is unregistered
If you come across a business using a similar name or logo that’s not registered, you can still register your mark if you’ve already been using the mark and were unaware of the conflicting mark in use at the time you adopted the mark.
If you didn’t find anything that is too close to your brand name or logo during your trademark search, congratualtions! You’re good to go ahead with your trademark registration application.
Get exper legal support for your trademark search
At Counselit, our registered IP agents offer expert trademark searches and registrations with NIPO Sri Lanka. We’ll help you assess whether your trademark is eligible for registration and give you the legal guidance you need to make it registerable. Call us at +94760011066, send us an email, or book a call for a free 30-minute consultation.
