How to search for similar trademarks before registering yours (and avoid a costly refusal)

Searching for similar trademarks before filing your application—technically known as a trademark clearance search—is the step that prevents the greatest number of refusals, oppositions, and forced rebranding exercises throughout the registration process. It involves checking, before filing your trademark, whether there are already identical or similar trademarks or trade names registered for the same or related goods and services.

Skipping this step is by far the most common reason why a trademark application is refused or, even after registration, challenged by a third party months or years later.

Why this search is so important

When you file a trademark application, the relevant office (such as the Spanish Patent and Trademark Office (OEPM), the European Union Intellectual Property Office (EUIPO), or another authority) reviews whether your sign meets certain formal requirements. However, not all offices automatically refuse trademarks that conflict with prior third-party rights. In many systems, owners of earlier trademarks must identify the conflict themselves and file an opposition within a specific period after your application is published.

This means two things:

• Your trademark may proceed to registration and still remain vulnerable if a prior right existed but was not identified in time.
• If the owner of that earlier trademark becomes aware of your application later, they may oppose it during prosecution or, in some circumstances, seek invalidation afterward.

Both scenarios result in lost time, additional costs, and, in the worst case, having to rebuild your brand identity (name, logo, domain name, packaging, and advertising) after it has already been launched.

What should you search for?

It is not enough to check whether the exact trademark name you want is available. You must assess the likelihood of confusion, which is evaluated from several perspectives:

• Phonetic similarity: trademarks that sound alike when pronounced, even if they are spelled differently.
• Visual similarity: trademarks that look alike (word structure, logo design, colours, etc.).
• Conceptual similarity: trademarks that convey the same idea or meaning, even if different words are used.
• Similarity of goods or services: similar trademarks may coexist without issue in completely different industries, but they could create confusion if they operate in the same or related markets.

A proper clearance search considers all four factors. Focusing solely on whether “the exact name is available” is one of the main reasons why do-it-yourself searches often provide a false sense of security.

Where to search: official sources

For an initial review, several public and free databases can be used:

• OEPM (Spanish Patent and Trademark Office): search tool for trademarks and trade names registered in Spain.
• EUIPO (European Union Intellectual Property Office): database of European Union trademarks valid in all EU Member States.
• TMview: a tool that aggregates trademark records from dozens of national, regional, and international offices, providing a broader overview.
• WIPO databases: for trademarks filed through the international registration system under the Madrid Protocol.

These tools are an excellent starting point, but they have important limitations that should be understood before relying on them completely.

Why a DIY search is not always enough

Searching for the exact name on Google or through the OEPM database may reveal identical trademarks, but it will generally not detect:

• Trademarks with different spellings but almost identical pronunciation (for example, variations using “k” instead of “c” or the use of hyphens).
• Trademarks that are conceptually similar but use entirely different words.
• The true scope of protection covered by an earlier trademark’s classes. Similar trademarks may coexist if they cover unrelated goods or services, but assessing this requires an understanding of the Nice Classification system.
• Pending applications that have not yet been registered but may gain priority before your application proceeds.
• Risks arising from trade names or other prior rights that may not appear in the same database as trademarks.

For this reason, when a business has already invested significantly in branding, design, or market launch activities, it is advisable to complement a basic search with a professional trademark clearance assessment, which evaluates the actual risk of refusal or opposition before filing rather than afterward.

What happens if you file without conducting a search?

The most common consequences include:

• Opposition during prosecution: the owner of a similar earlier trademark files an opposition, and your application may be refused in whole or in part.
• Coexistence agreements or restrictions: these may be negotiated in some cases, but they involve additional time, legal costs, and sometimes limitations on the scope of your trademark.
• Subsequent invalidation actions: even if no opposition was initially filed, your trademark may later be challenged if a valid prior right existed.
• Forced rebranding: if you lose the trademark after launching it commercially, the cost of changing your name, domain, packaging, and communications often far exceeds the cost of conducting a proper clearance search beforehand.

Checklist before filing your trademark application

• I have searched for the exact name in the OEPM database (or EUIPO database for an EU trademark).
• I have reviewed reasonable phonetic and visual variations of the name.
• I have checked for conceptually similar trademarks in my industry.
• I have identified the Nice Classification classes used by similar trademarks I found.
• I have considered expanding my search to other databases (TMview, WIPO) depending on my expansion plans.
• If the business has already made a significant investment, I have obtained a professional clearance assessment before filing.

Once you have completed these steps, the next logical stage is determining the most appropriate classes for your trademark registration.

How we do it at PADIMA

At PADIMA, we carry out a trademark clearance and viability assessment before filing any trademark application. We analyse relevant phonetic, visual, and conceptual similarities, review the appropriateness of the selected classes, and, where risks are identified, propose alternatives before you invest time and resources in an application with limited chances of success.

Learn more about our trademark registration and protection services and avoid unpleasant surprises before filing your trademark application.

Frequently asked questions