Look Before You Leap: The Costs of a Trademark Search

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Published on 9 August 2017

A Trademark is a form of Intellectual Property that helps distinguish the products or services of a business from those of other businesses. It may be in the form of a word, name, logo, slogan, device, packaging, color, combination of colors, sound, and/or smell.

Trademarks and Branding

Trademarks play a pivotal role in the branding of a product or a service and have the potential to make or destroy a brand. A fanciful, coined or invented mark (Exxon, for instance) is bound to instantly catch the attention of potential customers. A mark that is descriptive or has a negative connotation (when translated or transliterated), on the other hand, is not likely to get as much attention or can attract the wrong kind of attention. Thus, it is imperative that a lot of thought be put into the creation of a mark that is to be adopted for a brand.

Trademark Searches

After the creation of a mark, it is advisable for the business to perform a search for similar or identical marks in the jurisdictions in which it plans to adopt the mark. Though a trademark search is not mandatory in many jurisdictions, it is highly recommended.

The primary benefit offered by a search is that it may help in the unearthing of potential risks (if any) that the adoption and the commercialization of the mark may pose to the business, including infringing on the rights of other registered trademark holders, which could result in millions being spent on litigation.

While devising a search strategy, in-house counsels should also consider utilizing the services of local attorneys, who may be able to offer valuable jurisdiction-specific advice based on local usage and culture. Further, some National Intellectual Property Offices also offer their own search services on the payment of a prescribed official fee.

The Costs Involved

Let us now study the costs involved in trademark searching. The costs are generally dependent on the number of classes of goods and services under which the applicant intends to adopt a mark. As per the Nice Classification ('International Classification of Goods and Services'), there are 34 classes for goods and 11 classes for services.

For the purposes of this article, we shall consider the simplest form of trademark (i.e. word mark). Further, we shall assume that the applicant intends to adopt a mark under two classes in each of the top 10 jurisdictions (World Intellectual Property Indicators 2016; 2016), with the European Union countries being considered as a single jurisdiction. For instance, these classes could be Class 10 (Medical Apparatus and Instruments) and Class 44 (Medical Services).

The total estimated costs that might be incurred during the process of searching for two word marks in the top 10 jurisdictions range from $265 in India to $3,409 in the European Union (Table 1).

The estimated costs are inclusive of the official fees for requesting a search (where applicable) and attorney charges. The costs in the European Union are inclusive of a search for identical or similar, national, international, and community trademarks in the "core EU countries": Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden, and the United Kingdom.

Of the 10 jurisdictions, The National Institute of Industrial Property (Brazil), the Swiss Federal Institute of Intellectual Property, the Russian Federal Service for Intellectual Property, and the Turkish Patent and Trademark Office offer an official trademark search as part of their services.

Estimation of Trademark Searching Costs

Interested in getting similar estimates? The Global IP Estimator is Quantify IP's flagship software that accurately estimates the trademarking costs for a single trademark family based on our meticulous research of trademark legislations in 150+ jurisdictions. Specific stages of the trademarking process can be included or excluded from the estimates.

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Venkatesh Viswanath (Senior Analyst, Quantify IP) contributed to this article.
Exchange Rates Used: 1 US Dollar = 3.30 Brazilian Real, 0.96 Swiss Francs, 6.80 Chinese Renminbi,
0.88 Euros, 64.86 Indian Rupees, 113.41 Japanese Yen, 1150.31 Korean Won,
59.32 Russian Rubles, and 3.56 Turkish New Lira