Prior searches are a prerequisite for all trademark registration procedures which must be carried out systematically.
In reality, it is very risky to use a sign which may infringe upon pre-existing rights over either a registered treademark or a very well-known one as well as using a company’s name or domain name in the same industry.
There are different types of prior searches which can be used for determining the existence of identical or similar trademarks (looking at the similarities from a phonetic, non-literal point of view) as well as the existence of pre-existing company or domain names.
The difference between searching for an identical trademark and a similar trademark (called an ‘analogous search’) is as follows: in looking for an identical trademark, the search is letter-specific and is limited to pre-existing trademarks within the same industry or sector. For example, in a prior search for a company name registered as HELEN, the potential variations of these letters – ELLEN or ELENE – would not be searched even though they are very close or might merit some analysis. For a prior ‘analogous search’, all possible variations are searched in order to clearly determine whether there is a risk of confusion with a pre-existing trademark. More often than not, analogous trademarks are the ones contested during the registration a procedure and not identical ones. Ideally, these essential prior searches should be carried out by a professional, an Intellectual Property Advisor (CPI) or a lawyer specialized in intellectual property.