Introducing A Simple EU Trademark Search Process for In-House Counsel

Nadaline Webster,

True or False: conducting an EU trademark search is super expensive and takes too long?

What if we said that was false?

With new technology-assisted search, companies now have more control over the EU trademark search process than ever before.

Unfortunately, the majority of in-house counsel still rely on outsourcing more than they prefer. Whether that means turning everything over to outside counsel, or purchasing a costly legacy search report, companies have grown accustomed to spending an astounding amount of money for something lacking in both speed of delivery and flexibility.

The reason for the discrepancy is quite simple: human employees are meticulously culling through databases, before organizing the results and putting them into context. Understandably, legal professionals consider their time to be valuable and charge accordingly.

The good news?

Modern software options are now making the EU trademark search process much more practical for everyone.

In this article, we'll reveal how technology-assisted search works, and how it can accelerate your trademark process. But first, let's review how companies typically run their in-house search campaigns.

Introducing A Simple EU Trademark Search Process for In-House Counsel

The European Union is a unitary system, which means a EU trademark registration provides protection throughout all EU countries, even if you do not do business in them. This is great for the trademark holder, but when doing a new trademark search, you must search both the EUIPO, and all of the individual member states registries as well.

While every company has their own strategy for conducting a trademark clearance search, most follow the same general outline (assuming the company is conducting the work themselves):

  • Step 1: KnockOuts (within your home country + EUIPO, at a minimum)
  • Step 2: Preliminary Clearance (all member states)
  • Step 3: Full Search (garner legal opinion)

Unfortunately, steps one and two can be exceedingly time-consuming since they usually require jumping back and forth between a variety of resources like:

  • National and international trademark registries, as applicable
  • Company name databases
  • Competitor websites
  • Industry-specific government regulators (e.g. pharmaceutical and medical devices)
  • Industry-specific websites and news sources
  • e-Commerce platforms
  • App stores
  • International dictionaries (to assess potentially offensive word meanings in other languages)
  • Internet domain registries
  • Social media platforms

Obviously, due diligence before proceeding with a trademark application is the logical choice. Ideally, you want to be so confident in your candidate that you would be shocked if legal counsel found it to be "high risk."

This is where NameCheck shines.

A Closer Look at NameCheck

The software analyzes naming candidates against millions of existing trademarks (and other relevant data) for product similarity, word appearance, word phonetics, and meaning in over 150 languages.

The software’s features include:

  • Unlimited global search
  • App store data common law source
  • All class and product categories
  • Phonetic and visual similarity of proposed mark words
  • Semantic distances between product classes
  • International/global word meaning
  • Internet domain registrations

Created by experts in trademark law and linguistics, NameCheck is designed to do the heavy pre-screening for you. No more hours spent scouring databases and combing through stacks and stacks of irrelevant data.

The best part? Using NameCheck is super-simple:

  1. Type your candidate's name
  2. Select your classes/regions
  3. Click submit
  4. Get organized, contextualized results

In approximately 15 seconds, a comprehensive assessment with items ranked in order of relevancy appears. This high level of speed and accuracy is made possible by a powerful algorithm, which simulates a likelihood of confusion analysis. Results are ranked in order of threat level, according to the similarity of name, goods, and services.

Your candidate's final risk score will also take into account how others with similar candidate risk have acted in the past.

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Affordable Convenience

Not only does NameCheck exponentially speed up the search process (allowing in-house counsel to spend time on other pertinent projects), it also provides unlimited global search capability for one flat rate.

What happens when a company has the ability to spontaneously check as many candidates as they desire with a comprehensive level of accuracy?

  1. Creative team members are happy because they have free-range to explore their brand name candidates at greater capacity (and change directions at the last minute).
  2. Legal team members are happy because they can accomplish their work with a higher level of accuracy in less time (no more overlooking potential issues during the pre-screening process). During independent studies, we've found the program's results to be more reliable than traditional human analysis.

Ultimately, NameCheck provides a level of affordable convenience that's hard to beat. Being able to change search parameters on short notice, without being penalized with high fees, shouldn't cost a premium.

Simplify Your EU Trademark Search Process

NameCheck was developed a with the goal of freeing companies to make faster, better trademark decisions—without cutting corners. For this reason, we go beyond ranked reports.

While we're extremely proud of the technology itself that makes accurate ranking possible, we're just as proud of our unlimited search feature. By allowing companies to spontaneously search multiple regions, without worrying about a running bill, we're eliminating a huge dilemma: The lose-lose choice between following best practices and staying on budget.

With NameCheck, you can obtain the comprehensive data you need in order to make the best legal decisions possible for your organization. A win-win for everyone!

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nadaline-webster
By Nadaline Webster

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