Trade Mark Searching, Classification and Examination
Searching strategy
Effective searching combines exact-match, phonetic, fuzzy and conceptual searches. Candidates must understand the difference between a word search and a figurative search, and why a device mark search requires image similarity tools. Traps include searching only the exact spelling and missing phonetic equivalents (for example, 'Kleen' versus 'Clean'), or ignoring translations and transliterations of foreign terms.
The Nice Classification
Goods and services are classified under the Nice Classification, which has 45 classes (34 goods, 11 services). Understand class headings, the distinction between a class heading and a full list, and the principle that classification does not determine similarity. Traps include assuming that goods in the same class are automatically similar, or that goods in different classes cannot be similar. Similarity depends on the nature, purpose, and channels of trade of the goods.
Examination practice
Examiners assess distinctiveness, descriptiveness, and conflict with earlier marks. Know the difference between a preliminary and a final refusal, and the appeal routes. Remember that the examiner's role is not to determine infringement but to assess registrability.
Worked example
A client wants to register 'Aqua Pure' for bottled water. 'Aqua' and 'Pure' are descriptive, so the mark is likely to be refused unless evidence of acquired distinctiveness is provided. Rule of thumb: always search the mark as a word, as a device, and in translation, and check both the class heading and the full specification.