We have conducted a preliminary trademark search for a client operating in the restaurants industry

In June 2015, a client who operates in the field of restaurant business has approached us to conduct a preliminary trademark search for the trademark with which he would like to designate his restaurant. The client provided a figurative trademark consisting of a word and a figurative element. After conducting a detailed search in the databases with filed for registration as well as registered trademarks, we have found out that by June 1015 there were eight similar trademarks registered for goods and services which were not similar to those of class 43 of the Nice classification of goods and services for the purposes of registration of trademarks. After carefully analyzing the results, we prepared a detailed analysis. We have informed the client that the proprietors of the earlier marks may oppose the registration of the later mark but the opposition will be upheld as justified if it is proved in the opposition proceedings that the earlier mark (s) is/are marks with a reputation. According to Article 50a, paragraph 1 of the Law on Marks and Geographical Indications the following  shall  be  taken into  account  when determining  whether  the mark  is  a  well-known mark or a mark with a reputation:

  1. the extent to which the mark is known or recognized among the part of the community  which  covers  the  real  or  would-be  users  of  the  goods  or services  or  the  persons  engaged  in  the  respective  distribution  network  or the business circles dealing with the goods or services in question;
  2. duration, extent and geographical area of use of the mark;
  3. duration, extent and  geographical  area  of  public  representation  of  the mark,  including  advertising,  making  public  and  displaying  at  fairs  and/or exhibitions  of  the  goods  and/or  services  in  relation  to  which  the  mark  is used;
  4. information about the successful enforcement of the rights in the mark, if registered;
  5. value of the mark;
  6. other circumstances.