How to Search Before Filing: If you Discover a Similar or Identical Mark

Discovering an identical or similar mark prior to filing may be preferable to finding out afterwards. This knowledge will enable you to make appropriate filing decisions. It is important to determine if the identical or similar mark:

  • is for the same or related goods and/or services
  • is a live application or registration

If the identical or similar mark is for unrelated goods and/or services, you may decide to proceed with your application. Similarly, if the application has lapsed or the registration has expired, you may also wish to proceed.

Of course, you may also elect to proceed with your application even if there is an earlier application or registered mark in a Contracting Party of interest for the same or related goods and/or services. You should be aware that in such a case a provisional refusal may be raised by the concerned Office of a designated Contracting Party, on the basis that the mark conflicts with an earlier pending or registered mark. There are a number of ways to overcome this type of refusal, but a local representative in the Contracting Party may be necessary to respond to the provisional refusal.

Remember – If you need assistance to search prior to filing, or advice on strategies to avoid conflicts with already existing marks, you can consult a trademark attorney, agent or lawyer in your country or in the country of interest. National/regional IP Offices usually maintain lists of registered attorneys.