Some of the biggest trademark challenges have to do with the nature of the mark itself. Issues such as descriptiveness can put a stop to branding strategies before the mark is even in use. We help clients to identify the issues with trademarks that can act as in impediment to strong rights.
The purpose of the search is to uncover any marks currently registered, the subject of pending applications, or in use, which may be considered confusingly similar under the legal standards for trademark infringement. This is advisable from a registration standpoint because the Japan Trademark Law provides that “… any trademark may be registered unless it consists of or comprises a mark which so resembles a mark already registered or in use by another as to cause confusion, or to cause mistake, or to deceive.” [Trademark Law Article 4(1)(x),(xi),(xv) and (xix)].
It is advisable from an infringement standpoint as well because the adoption of a mark similar to a mark already in use by another for similar or related goods or services could expose you to civil and criminal liability for trademark infringement or dilution [Trademark Law Article 25, 37, and 78].
But the value of a search is not just for clearance opinions. An otherwise non-conflicting mark may be nonetheless problematic because it exists in a crowded field of similar marks. A trademark search helps us to identify how strong your mark may be. And even after a mark has been decided on and registered, the results of a trademark search remain valuable as a reference point for the mark’s position in the market. This allows us to create effective enforcement strategies against other users.
MARKS IP Law Firm can assist you with trademark search and selection. We search for and analyze existing trademarks and identify conflicts through the use of the Japan Patent Office (JPO) databases, and render an opinion of the likelihood of success of your potential trademark application. We can also make sure the trademark you select is strong or descriptive.