Trademark Clearance

The question

You have a new name for a company, product or service, and you are about to spend money on it: design, packaging, a website, a campaign. Before that happens you want to know two things. Can you use the name without being stopped by someone else's earlier right? And can you register it?

The risk is not only an identical name. A mark that sounds like an earlier one, or that means the same thing in another language, can be enough for an opposition, a refusal or a letter from a competitor's lawyer. Changing a brand after launch costs far more than checking it before. What a clearance search is, and what it is not, is explained in our Knowledge Base.

Clients usually come to us in one of a few situations: a start-up choosing its company and product name, an agency presenting a shortlist to a customer, an established business extending a brand to a new product line or country, or a company that has received a letter from a competitor and wants to know how exposed it is. The depth of work differs in each case, but the questions are the same.

Our approach

We work in stages, and an attorney signs off at the end of each one before the next begins.

First we take in the brief: the name or logo, the goods and services, and the countries where you plan to trade. Then we look at absolute grounds, meaning whether the sign is descriptive, generic or otherwise unregistrable. This is checked in all 24 official EU languages, because under the EU Trade Mark Regulation (Article 7(2)) a ground that exists in only part of the Union is enough to block an EU mark.

Next comes the search itself, run through our clearance engine. It searches trademark registers through TMview (more than 70 IP offices) and designs through DesignView. Beyond the registers it checks domain names, the open web, social media handles, online marketplaces and company registers, since earlier rights are not limited to the trademark register.

The hits are then assessed for relative grounds. We score similarity visually, phonetically and conceptually, anchored to the EUIPO's similarity tools and its harmonised database of goods and services (TMclass), and we look for conflicts across classes under the Nice classification. How these elements are weighed is described in understanding trademark similarity. Where an earlier owner could be approached, we also check existing coexistence agreements.

You choose the depth. A quick check suits an early idea and a shortlist. A preliminary search suits a name you are leaning towards. A full clearance suits a brand you will invest in heavily or launch in several markets. If you are still choosing between candidates, we can screen them linguistically in 36 languages first, so you do not clear a name that means something unfortunate somewhere.

What you get

You receive a structured clearance opinion. Each conflict is listed with its risk level, the reasoning behind it, and the opposing and supporting arguments. The opinion ends with a recommendation: go ahead, go ahead with changes (a different spelling, narrower goods and services, another class), go ahead and monitor, or do not use the name.

A comparison report in Word, Excel or PDF sets your candidates side by side, which helps when a marketing team has to decide between three names.

The result is advice on risk, not a guarantee. A search can only find what is on the registers and the web at that moment, and a positive result does not bind an opposing party who files later. Where the opinion is favourable, you can move straight to filing the application, and the goods and services we cleared are the ones we carry into the filing.

A short example. A Ghent software company has three candidate names for a new analytics product. We run a quick check on all three and drop one at once, because its meaning in another EU language is unfortunate. For the remaining two we carry out a preliminary search. One turns out to sit close to an earlier mark in a neighbouring class, with a risk level we rate medium. The company chooses the other, we confirm it with a full clearance, and the opinion goes to the filing stage. The team has spent a few days on checks, not months on a brand it would later have had to abandon.

Next step

Send us the name, the goods and services and the countries that matter, and tell us how far along the project is. We will propose the depth that fits.

Schedule a meeting or contact us to get started.