Trademark Search During Registration — Why Pending Applications Matter More Than Registers
To avoid a refusal of trademark registration, it is advisable to conduct a preliminary information search for identical and similar signs before submitting your application materials. This search reveals all similar signs, including applications at the examination stage — not only trademarks that have already been registered.
Once the results come in, our specialists prepare a report warning the client about every risk they may encounter during registration, if any exist. The client also receives the recommendations needed to move forward.
Why the open register is not enough
The public database at sis.ukrpatent.org is freely available and lets you check marks that are already registered. But it does not show the thing that matters most — applications currently under examination.
The problem is that trademark rights are counted from the filing date, not from the date the certificate is issued. An application filed by a competitor six months before yours will not yet appear in the register of registered marks, but it is exactly what will ground a refusal once your application reaches substantive examination.
In practice it looks like this: an entrepreneur checks the name themselves in the open database, finds nothing, files an application, pays the fees, launches advertising and signage — and 18 months later receives a notification that an earlier application with an identical sign exists. Money spent on fees, time lost, and the entire branding budget gone.
What a full search actually covers
A preliminary information search for identity and similarity covers a far wider range of signs than a simple name-match check:
- registered trademarks in the relevant Nice classes;
- applications at the formal and substantive examination stage, not yet published as certificates;
- international registrations extended to the territory of Ukraine under the Madrid System;
- phonetically similar signs — names that sound the same or nearly the same;
- visually similar signs — different spellings that are perceived as the same thing;
- semantically similar signs — translations, synonyms, and conceptual equivalents.
The last three categories are critical. Examiners refuse applications not only for an exact match, but for similarity "to the point of confusion". Assessing that criterion yourself, without experience of the office's practice, is next to impossible.
What the report contains
The result of a search is not a list of marks found — it is an analytical document. In the report we set out:
- The identical and similar signs identified, with their status, classes, and priority dates.
- An assessment of the risk of refusal for your sign in each of the classes you intend to claim.
- Recommendations on what to do next — from adjusting the list of goods and services to changing the sign itself or the filing strategy.
Sometimes the conclusion is unwelcome: the chosen sign is better left unregistered. But finding that out at the search stage is far cheaper than after a year of waiting, all the fees paid, and the packaging already printed.
When to run the search
The optimal moment is once the shortlist of names has been formed but before the final one is approved. At that point the search results can still influence the choice, and you will not have spent a branding budget on a sign that fails examination.
The second mandatory moment is immediately before filing, if several months have passed between choosing the name and submitting the application. New applications with an earlier priority may have appeared in the meantime.
What it costs
The cost of a preliminary search is a small fraction of the overall cost of registration, and incomparably less than what you would spend appealing a refusal, refiling, or rebranding. It is the cheapest insurance available anywhere along the registration path.
Planning to register a trademark? Order a preliminary trademark search — we will check the sign against both registers and pending applications, prepare a risk report, and tell you plainly whether filing is worth it.
