LHR Case Study: Trademark Application – Older Marks Discovered? Why a Thorough Search Is Just the Beginning – Not the End
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“There’s already something similar in the register – the new trademark doesn’t stand a chance.”
You hear this kind of statement a lot.
And it’s often wrong.
Because a thorough trademark search isn’t about burying ideas – it’s about making informed decisions and developing smart strategies. A recent case from our advisory practice illustrates this perfectly.
Trademark search across six classes – with a strategic view of the bigger picture
An internationally active company is planning to launch a new brand covering a wide range of products – from cosmetics and household goods to textiles and clothing. The challenge: the proposed mark is phonetically and visually very similar to three older marks already listed in the register.
Rather than abandoning the project prematurely, we conducted a comprehensive similarity and risk analysis – including a traffic light system to assess the potential conflicts.
The result: Two of the three potentially problematic trademarks were registered back in 2012. This means they are already subject to the obligation of use.
When old trademarks exist only in the register – and no longer in the market
Our supplementary research revealed that the trademarks in question are likely no longer in use. A clear advantage for our client.
Because anyone who wants to assert an older mark against a new one must be able to prove genuine use – for the past five years. If they can’t, the mark is at risk of being revoked due to non-use.
Tactical advantage: Sometimes attack is the best defense
Especially interesting: One of the trademark owners refiled an identical mark in 2021 – possibly to bypass the expired use requirement. This opens up another angle of attack: a cancellation request based on bad-faith filing.
Our conclusion:
A good trademark search doesn’t just reveal risks – it also creates opportunities. When you know who you’re dealing with, you can fend off attacks, prepare countermeasures, and successfully register your trademark despite apparent obstacles.
That’s why a search is not the end of a trademark project – but its strategic foundation.
Multiple awards.
