6. Questions on Search

6.1 Can a search be carried out by the OHIM before filing an application to find out whether or not a similar mark has already been registered?

6.2 Does the Office carry out searches for identical or similar trade marks?

6.3 Are national search reports included in the application fee?

6.4 How do I request national search reports?

6.5 How much do national search reports cost?

6.6 How are the search reports distributed?

6.7 Are proprietors of earlier Community trade mark applications or registrations, or of earlier international registrations designating the EU, informed about the results of the Community search reports established by the Office and if so, when?

6.8 How should that information be interpreted by the proprietor of an earlier mark cited in the report?

6.9 How can the proprietors of those earlier marks obtain further details about the later Community trade mark application or international registration?

6.10 Are search reports fully automatic?

6.11 How is a search carried out regarding the figurative elements of marks?

6.1. Can a search be carried out by the OHIM before filing an application to find out whether or not a similar mark has already been registered?

No, the Office only performs a search once the CTM application has been filed and does not carry out searches on individual request. Such services are usually provided by private companies.

In addition, CTM-ONLINE, the OHIM's online database and TMview, are both available to all users free of charge.

CTM-ONLINE provides ready access to information on Community trade mark applications and Community trade marks and is updated on a daily basis. This tool should, however, not be used to establish with certainty that no earlier conflicting rights exist in a given case.

TMview is an online consultation tool allowing any Internet user, to search the trade marks of all participating Trade Mark Offices at national, international and European Community level.

With the gradual integration of new offices or organizations, TMview is aimed to be the platform for data from all 27 EU Member States in addition to the information available from OHIM and WIPO

6.2. Does the Office carry out searches for identical or similar trade marks?

Yes, for each CTM application and International Registration designating the European Community, the Office draws up a Community search report during the examination procedure. This report indicates earlier identical or similar CTMs and CTM applications and International Registrations designating the European Community for identical and similar classes of goods and services. The report is sent to the applicant or his/her representative (if appointed) before the publication of the application.

6.3. Are national search reports included in the application fee?

National search reports are optional and must be requested by the applicant at the time of filing. The fee to pay is EUR 12 per participating office. As from 1st January 2013, eight national offices take part in this optional search system and perform searches in their national registers: Czech Republic, Denmark, Greece, Lithuania, Hungary, Romania, Slovakia and Finland. The total fee to pay is therefore EUR 96 at this moment.
When national search reports are requested, a deadline of two months is given to the national offices to transmit the reports to the OHIM.

6.4. How do I request national search reports?

This can only be done at the time of filing of a CTM application or, for International Registrations (IRs) designating the European Community, within one month after transmission of the file from WIPO to the OHIM.
Information on the different steps to be taken for a CTM and an IR respectively.

6.5. How much do national search reports cost?

The fee for optional national search reports is EUR 12 per participating office which makes a total fee of EUR 96 at this moment.

6.6. How are the search reports distributed?

Users will receive the search report through their usual communications means with the OHIM (e-communitation, fax transmission or by post).

6.7. Are proprietors of earlier Community trade mark applications or registrations, or of earlier international registrations designating the EU, informed about the results of the Community search reports established by the Office and if so, when?

Yes, they are informed by the Office that their earlier marks have been cited in a Community search report concerning a particular Community trade mark application or an international registration designating the EU, filed under the Madrid Protocol. This happens after the CTM application has been published in the Community Trade Marks Bulletin, or when the search report regarding the later international registration designating the European Union has been sent out.

6.8. How should that information be interpreted by the proprietor of an earlier mark cited in the report?

The letter is purely informative and it should never be deemed as a finding that a conflict actually exists, or that the marks and goods and services involved are indeed identical or similar. Such a finding may only be made through a final decision in an opposition or cancellation proceeding within the OHIM. The purpose of sending the letter is to make proprietors aware of the new application so that they can assess whether or not a real conflict with their earlier trade mark exists and then act accordingly.

6.9. How can the proprietors of those earlier marks obtain further details about the later Community trade mark application or international registration?

Further information on the later CTM or international registration may be obtained free of charge by consulting the OHIM's online database, CTM-ONLINE, which provides ready access to information on Community trade mark applications and Community trade marks and which is updated on a daily basis.

6.10. Are search reports fully automatic?

Search reports are drawn up on the basis of a semi-automatic search carried out in the Office's database with the aid of a specific search program. The final results are selected by an examiner. It should be noted that the information contained in these reports is sent for information purposes only and it is therefore not legally binding.

6.11. How is a search carried out regarding the figurative elements of marks?

As regards figurative marks, three-dimensional marks or figurative elements in combination marks, the search is done on the basis of the International Classification established by the Vienna Agreement on the Classification of Figurative Elements of Marks (see OHIM Vienna classification manual). The OHIM uses a modified version of the Vienna classification of figurative elements, adapted to our specific needs in order to perform efficient searches

6.12. Is the similarity of goods or services taken into account within the search? If so, how is it done?

As regards the specific goods and services involved, the search is done exclusively on the basis of the class numbers of the International Classification established by the Nice Agreement on the International Classification of Goods and Services. The search program includes earlier marks with goods and services falling into the same class as well as into conflicting classes that typically include similar goods and services.