TM Search- Internal or External?

by varun · Published January 15, 2021 · Updated December 24, 2021

A trademark is a intellectual property consisting of recognizable sign, expression or design which identifies particular product or services from other. A trademark can be owned by a individual, business organization or legal entity. A trademark can be located on package label or organization. Trademark is an intellectual property that is used to differentiate products and services of one firm or individual from others. A trademark is an unique identifier for a product or a firm. Owner of a trademark can pursue legal action for infringement of trademark.

TM Search is an important step in registering a trademark for the firm. A Lousy TM search can cost company or a firm dearly later on. There are several risks that are attached to a incomplete trademark public search done by a firm. Several risks included with an incomplete TM search includes –

Rejection of trademark registration application
Infringement of existing trademark
Potential revocation of an existing trademark

Usually, firm take two paths for a TM Search in India. These are internal trademark search and external trademark search. Internal trademark search is performed when a firm utilizes its internal resources such as its legal team to search for available TM search. While external TM search stands when a firm hire external resources to complete the task of trademark public search. Both methods for research have their own pros and cons. Meanwhile, it is always better to go for a external professional agency or a firm who specializes in IPIndia public search as it tends to help later in business and mitigates several risks that are associated with internal IPIndia search.

In this article, we would discuss both internal and external research in details. We would also try to find out benefits and losses associated with each one

Internal TM Search

There are many companies and corporates in India who conducts trademark search internally and try to minimize costs that are attached with hiring a external research vendor for the same. This thinking is specially prevalent in smaller firm or firm with limited intellectual property.

Internal trademark search is beneficial for smaller firm with limited budget and few intellectual property to safeguard.

Pros of Internal TM Search

Costs associated with hiring a external agency for performing the task is saved. External vendors charges several times over compared to internal employees cost. This expenses can be saved by small firm.
Presence of national and international databases have made task of a trademark search much more easier compared to earlier times. Internal TM Search can help in increasing knowledge base of internal employees which can be utilized in other legal fields concerning firm’s operations.

Cons of internal TM search

Internal employees lack the expertise associated with external trademark search providers. This means that results provided by internal team would be less comprehensive compared to an external firm.
Internal legal team is not solely employed for trademark search within company. Internal teams have got many other tasks other than TM Search that results in longer waiting time for a perfect result. However, external firm which specializes in trademark search would be able to return results in much shorter time.
Internal trademark public search also reduces efficiency of internal department. crucial time that is occupied in TM search can easily be utilized in some other important legal tasks associated with firm like legal issues concerning with business partners or drafting a perfect contract with business vendors.

External TM Search

External TM Search stands for hiring of services of external firm for performing a trademark search on behalf of the company. Trademark registration and trademark search is specialized subject and there are several experts in economy who have gain mastery over TM Search over the years with application of tried and tested strategy for IPINdia public search.

Pros of external TM Search

External professionals often have the niche expertise which is not possessed by internal team within firm meaning that many trademark searches conducted in-house are likely to be less comprehensive and therefore leave your mark open to risks.
An experienced third party have tried and tested their methods over a period of time and this results in tremendous improvements in final results for a firm.
A trademark search is a time limited activity. A firm cannot complete trademark search over a long period of time and hopes that same trademark would not be taken by some other firm in some part of the world. External firms due to their expertise and well defined process for TM Search results in a process getting completed in a time bound manner.
IP trademark search is a global subject, a third-party team can also take into account factors such as variations on spelling, translations and linguistic and phonetic adaptations of search terms, as well as cultural differences.
External trademark search teams have much larger resources compared to internal team. This helps in identifying a better result for your trademark.
External vendors can help to minimize or completely eliminate several unnecessary risks associated with internal TM Search such as -Rejection of trademark registration application, Infringement of existing trademark, Potential revocation of an existing trademark.

Cons of Externals TM Search

Costs associated with external firm that is hired to complete a trademark search is usually higher compared to internal team dong the same. This is crucial for smaller firm with budget constraint or a firm with limited intellectual property to protect.

In this article, we have discussed two methodologies that can be utilized while performing a TM search. Though, internal trademark search seems to save costs initially. But, do remember that their is no substitute for a brand name or brand equity lost due to a less comprehensive research.

A brand is built after a several years of efforts and sweat. Brand is made for years if not decades. A trademark is a perfect way to protect your brand from infringement in future. Moreover, costs attached with foregoing a brand is many times higher compared to initial costs associated with hiring a external agency for it. Thus, it is always advised to utilize services of a seasoned trademark search firm to mitigate any risk that are associated with either incomplete or no trademark search.

We would continue to write more informative articles related to trademark in India. Topics such as trademark search, trademark benefits, trademark registration, trademark classes etc. would be discussed in great details. Meanwhile, you can read more about informative articles on various trade licenses in India.