What is a trademark search?
A trademark search is the examination of whether your desired sign is already used or protected by others and whether a conflict can arise as a result.
A sign that is suitable for distinguishing the goods or services of one enterprise from those of other enterprises is considered a trademark. These can be words, letters, numerals, images, three-dimensional shapes or combinations thereof with colors (Art. 1 Abs. 1 MSchG, Art. 1 Abs. 2 MSchG).
In practice, this often involves names, logos, product designations, app names, shop names or claims. A good search therefore does not only ask whether the exact same name already exists. It primarily asks whether a similar sign is protected for the same or similar goods and services. That is precisely where most risks arise.
Why is registration with the IGE not sufficient?
The short answer is: The IGE does not automatically check whether your trademark collides with older trademarks during registration.
The law distinguishes between absolute and relative grounds for exclusion. Absolute grounds for exclusion concern, for example, signs that are public domain, are misleading or violate law and order (Art. 2 MSchG). The IGE examines such points in the registration procedure, and it rejects an application if corresponding grounds for rejection exist (Art. 30 Abs. 2 MSchG).
It is different with older trademark rights. Signs are excluded from trademark protection if they are identical or similar to an older trademark and are intended for the same or similar goods or services, so that a likelihood of confusion arises (Art. 3 Abs. 1 MSchG). In principle, only the owner of the older trademark can invoke these relative grounds for exclusion (Art. 3 Abs. 3 MSchG).
The IGE itself points out that it does not check for possible infringements of older trademarks and company rights in the registration procedure. Your own clarification before registration is therefore central. In practice, this means: Your trademark can be registered and still be attacked later. An older trademark owner can file an opposition after publication. The period for this is three months from the publication of the registration (Art. 31 Abs. 1 MSchG, Art. 31 Abs. 2 MSchG).
Which sources should you check first?
You can carry out an initial trademark search yourself. It does not replace a legal evaluation, but it helps you to identify obvious risks early on.
The most important starting point is the Swissreg-Markendatenbank des IGE. There you will find Swiss trademarks, pending trademark applications and international registrations with protective effect for Switzerland. In addition, you should check whether similar companies are registered in the Central Business Names Index, whether matching domains have been allocated and whether the name is already heavily used by another company on the internet.
The IGE expressly recommends on its page on eigenen Recherche to take company and domain names into account in addition to trademarks.
The order of priority is important here. Start broadly with identical hits. Then search for variants, spelling mistakes, hyphenations, plural forms, similar word beginnings and similar endings. For English or foreign-language terms, you should also check obvious translations and spellings. For logos, there is the additional factor that image components are more difficult to search in databases than words.
What matters when there is a likelihood of confusion?
Likelihood of confusion does not only mean that customers directly confuse two trademarks. It is also sufficient if they recognize a difference but assume an economic connection because of the similarity.
The Federal Supreme Court describes the likelihood of confusion as an impairment of the distinguishing function of the older trademark. It exists if the public attributes goods or services to the wrong trademark owner or assumes incorrect connections due to the similarity (BGE 128 III 96 E. 2a). The decisive factor is not an isolated comparison of letters, but the overall impression.
For your trademark search, this means: You must check at least three levels. First, the similarity of the signs is important. Do the names sound similar? Do they look similar? Do they have a similar meaning? For word marks, typeface, sound and meaning count. For logos, the graphic effect is added.
Then the closeness of the goods and services counts. The closer the products or services are to each other, the greater the distance between the signs must be. The Federal Supreme Court states that identity or similarity forms a limit. If goods or services are not at least of the same kind, a relative ground for exclusion is fundamentally not considered, apart from special cases such as famous trademarks (BGer 4A_265/2020 E. 7.1). Similarity exists if there is a certain proximity between the offers. It is rather absent if products have different purposes or are used differently (BGer 4A_265/2020 E. 7.2).
Finally, the distinctive character of the older trademark plays a role. A fanciful or well-known trademark usually has a broader scope of protection than a weak, descriptive sign. Conversely, even minor deviations can be sufficient for weak trademarks. Nevertheless, you cannot simply ignore descriptive components if they shape the overall impression.
How do you check goods and services correctly?
When registering a trademark, you must specify the goods and services for which your trademark is to be protected. This information must be precise and classified according to the Nice Classification (Art. 11 MSchV).
This list is crucial for the search. You should not only compare the classes, but the concrete goods and services. Two trademarks in the same class can be unproblematic if the offers are far apart. Conversely, offers in different classes can still be close enough to create a risk.
An example from case law shows this well. The ORFINA case concerned watches on the one hand and other possible fashion accessories on the other. The Federal Supreme Court made it clear that a general reference to fashion items alone is not automatically sufficient to assume similarity (BGE 128 III 96 E. 2d).
In the Lumimart vs. Luminarte case, however, the Federal Supreme Court affirmed the proximity in the field of lighting. Luminaires, lamps and related products can belong closely together from the perspective of the public (BGer 4A_265/2020 E. 7.3). For your search, this means: Do not only think in classes, but from the customer's point of view.
What risks exist despite a registered trademark?
A registered trademark gives you a strong right. The trademark owner may use the trademark for the claimed goods or services and dispose of it (Art. 13 Abs. 1 MSchG). He can forbid others under certain conditions to use a colliding sign, for example on products, in advertising, on business papers or otherwise in business transactions (Art. 13 Abs. 2 MSchG).
This is particularly important for websites, shops and domains. A conflict can therefore not only arise if you apply a sign directly to a product. The use as a shop name, domain, social media name or advertising sign can also become relevant if there is a sufficient connection to Switzerland and the other requirements are met.
The risk is therefore not just theoretical. An older trademark can lead to opposition, cancellation or invalidity proceedings, injunctive relief and costs. In the worst case, you have to rename after the launch, change packaging, replace domains and rebuild marketing material.
When should you seek professional help?
Doing your own research is useful, but it has limits. The IGE itself points out that free databases only provide limited reliable bases for decision-making, especially in the case of similar trademarks. Image marks, short fanciful names, international expansion, highly populated industries and names that are based on descriptive terms are particularly delicate.
Professional support is worthwhile in particular if you are already investing in branding, packaging, website or advertising. Then the damage of a later collision is significantly higher than the cost of a prior examination. If you need support with the topic of trademark protection, Jurata will be happy to help you at any time via the service for Markenschutz.
How do you proceed in practice?
The best way is to treat the trademark search as a fixed step before each registration. First you define the sign exactly. Is it a pure name, a logo or a word-picture mark? Then you define the goods and services as concretely as possible. Only then do you search in Swissreg for identical and similar signs, supplement the search with companies, domains and internet searches and evaluate the hits according to proximity, similarity of signs and distinctive character.
If you have several possible names, check them in parallel as early as possible. Often, the very first search shows which names are heavily burdened and which have better chances. This way you avoid your team investing too much emotionally and financially in a trademark that later wobbles legally.
Frequently asked questions about trademark search
Does my trademark have to be free worldwide?
No. For a Swiss trademark registration, the first decisive factor is whether older rights with effect for Switzerland stand in the way. However, if you later want to sell in the EU, in the USA or internationally, you should extend the search to these markets.
Is it enough if the domain is still free?
No. A free domain does not mean that the name is free under trademark law. Trademark rights, company rights and domain names follow different rules. A domain can be available even though a similar older trademark exists.
Can I register a trademark even though there are similar hits?
That depends on the concrete proximity. Similar hits are not automatically a ban. The decisive factors are the overall impression, proximity of goods and services, distinctive character and the view of the relevant customer base.
Should I search first or register first?
As a rule, you should search first. Registration can be quick, but a later collision can be significantly more expensive. A clean trademark search reduces the risk that you will have to rename after registration or after the market launch.
