Definition

A trademark clearance search is a crucial preliminary step before filing a trademark. It involves checking whether an identical or similar sign is already registered or used for identical or similar goods and services.
This search helps to avoid refusal of registration, opposition proceedings, or trademark infringement litigation.

Legal basis and framework

In France and the European Union, the legal framework for clearance searches is based on the principle that a trademark must be available for registration:

• Article L.711-3 of the French intellectual property code (CPI)  a trademark shall be refused if it infringes prior rights
• Articles L.712-3 and L.712-7 CPI  grounds for refusal and opposition before the INPI
• Article 8 of Regulation (EU) 2017/1001 on the European union trademark (EUTMR)  relative grounds for refusal
• Directive (EU) 2015/2436 – harmonization of trademark protection in the EU

A comprehensive search should include the following prior rights:

• Registered and pending trademarks
• Company names, trade names, and signs
• Domain names
• Geographical indications and appellations of origin

Strategic importance

A trademark clearance search is a risk management tool that ensures :

• The secure filing of a new trademark
• The prevention of costly opposition or invalidity actions
• The development of a branding strategy aligned with available rights

For maximum reliability, a comprehensive similarity search is recommended, carried out by an Intellectual property attorney, covering France, the EU, and other key international jurisdictions.

FAQ

1. What is a trademark search for prior rights?
   It is a preliminary check to ensure that a sign identical or similar to the one you wish to register is not already registered or used for similar products or services.
2. Why is conducting a trademark search for prior rights important?
   It helps prevent the risks of registration refusal, opposition, or trademark infringement litigation.
3. What are the legal bases for a prior rights search?
   The search is based on Article L.711-3 of the Intellectual Property Code, EU Regulation 2017/1001, and Directive (EU) 2015/2436, which govern trademark availability in France and the EU.