Trade mark search: why the Office does not check your mark

A registered trade mark feels like security. It only is to a limited extent – and anyone who does not know the difference finds out through a cease-and-desist letter.

What is examined and what is not

On registration, the Patent Office examines absolute grounds for refusal: lack of distinctiveness, descriptive indications, capacity to deceive. Whether an earlier trade mark of a third party stands in the way is not examined. Registration is therefore no proof that the trade mark does not infringe the rights of others. Opposition, an application for cancellation and an action for an injunction remain possible. For an opposition, the Trade Mark Protection Act sets a period of three months from publication of the registration (§ 29a Abs. 1 MSchG). Those who did not search before filing often first feel a conflict in precisely these opposition proceedings – after registration, when the name and branding are already fixed.

What a search achieves

An identity and similarity search shows earlier trade marks in the relevant registers – national, EU-wide, international – and in the classes of goods and services actually affected. On top of that comes a look at company names and domains: unregistered signs, too, can give rise to rights.

What a search at the Patent Office costs

The Austrian Patent Office offers three tiers.

The first is searching the free databases yourself. TMview makes it possible to search national trade mark registers – including those outside the EU – as well as the EUIPO and many other offices in a single combined query; eSearch plus is the EUIPO's database for EU trade marks and allows watch functions to be set up for individual marks. Searching yourself costs nothing. What the database does not answer, however, is whether a hit is legally similar to your own mark.

The second tier is the Office's trade mark similarity search: EUR 105.00 for five classes, EUR 25.00 for every further ten classes or part thereof; the amounts are not subject to VAT. The search covers Austrian, international and EU trade marks as well as the Companies Register, checked for company names with the same wording. The result arrives as an electronic report listing proprietors and classes, usually within around 72 hours, counted in working days.

The third tier is the Pre Check Marke: EUR 210.00 for five classes, again EUR 25.00 for every further ten classes or part thereof, likewise without VAT. Here the Office carries out a legal examination of whether the mark is distinctive, not descriptive and not deceptive, and additionally runs a conflict check against earlier trade marks; the result is available after around five working days. One caveat is essential: the assessment is not binding in later opposition or cancellation proceedings and guarantees neither registration nor the continued existence of the mark.

What an application costs and how long it takes

A national application costs EUR 294.00 online and EUR 314.00 on paper; both amounts include the document fee (Schriftengebühr) of EUR 44.00. This covers three classes of goods and services; from the fourth class onwards, EUR 75.00 is payable per class. For online applications there is a fast-track option with processing in around ten working days – but only for word marks, figurative marks and combined word and figurative marks, and only if the goods and services are taken from the harmonised TMClass database; paper applications as well as collective and certification marks are excluded. Without fast track, the Office does not state a fixed processing time.

An EU trade mark, valid throughout the EU, costs EUR 850.00 for one class when filed electronically; the second class costs EUR 50.00, and each further class from the third onwards EUR 150.00. If protection is to reach beyond the EU, a single international application under the WIPO Madrid System can, with one set of fees, provide protection in currently 133 countries.

How long protection lasts

The term of protection is ten years, counted from the day of application, not of registration (§ 19 Abs. 1 MSchG). It can be extended any number of times, by a further ten years each, through timely payment of the renewal fee.

The timing

The best moment is while the name, logo, domain and printed materials can still be changed. After that, the cost of a conflict does not rise in a straight line but in leaps – rebranding hits the website, signage, packaging and contracts all at once. In a case of similarity conflict, the question is rarely whether it can be resolved, but how expensive the solution will be. Compared with that, the search is the smallest item in the entire project.