Conducting trade mark searches is an essential part of the process of choosing and protecting new brands. It is fair to say that it is also frequently the most frustrating part of the brand protection process for clients given the possibility that a proposed brand name is unavailable with the consequent need to go back to the drawing broad and start again. But why is searching so important anyway and what does it achieve?
Why should I search?
Before you choose a new brand name, it’s vital to know whether it is safely available both for use and registration. There is little point in spending large sums of money on brand creation or brand development only to discover that your new name is not available because it would infringe an existing registered mark. The purpose of clearance searches is to find out whether your proposed name might infringe a third-party registration. We also want to find out whether an application to register your proposed name is likely to succeed or to be blocked, either by the registry or by an existing brand owner.
How do I know if I’m infringing?
A registered trade mark gives the owner the exclusive right to use that mark in trade for the protected products or services covered by the registration. However, those exclusive rights extend also to cover similar trade marks and similar goods or services. Depending on how distinctive the registered mark is, that means that the owner could enjoy a broad scope of protection, extending far beyond preventing use of the same mark for the owner’s products to preventing a merely similar mark for merely similar products or services. Moreover, in most countries, such as the UK, there is no obligation to use a registered mark for the first five years of registration. This means that the registered owner can prevent the use of its mark based on its protected products or services even if it is not using its registered mark for any of them. Furthermore, the owner of a mark with a reputation can even prevent the use of a similar mark for dissimilar products or services in certain conditions. All of this makes it extremely important to carry out clearance searches before launching a new brand name.
What kinds of searches are available?
The key point here is that there are many kinds of searches available, depending mainly on how much you are prepared to pay. At one end are free online trade mark searches such as the online search facilities provided by the UKIPO or the EUIPO. These are free and easy-to-use search databases which aim to give brand owners at least an initial idea of the situation. Their main limitation is that they are essentially identical or near-identical searches only which means that they will not necessarily identify relevant marks which could pose a serious infringement risk. At the other end of the scale are full clearance searches where the search data is reviewed and prepared by professional search companies. These are far more comprehensive and reliable, and they aim to identify all potentially relevant prior trade mark filings and registrations.
What are so-called common law searches?
It is important to remember that an existing brand owner may be able to object to use or registration of your new mark based on unregistered trade mark rights, even if it does not have any registered mark. In the UK, these are called common law rights because they rely on unregistered legal rights such as passing-off rights. However, given that such rights are not registered, they will not be identified in any search of the trade mark registers, no matter how comprehensive or expensive the register search. They can only be identified, if at all, by conducting searches of actual trading activity such as online web checks, telephone directories, company name and domain name searches or trade directories. Although common law searches can never be 100% definitive, they can reduce the risk level to a manageable level.
What are the possible consequences of not searching?
The possible consequences of launching a new brand without first conducting any searches are potentially disastrous. You could, for example, be sued for infringement by an existing registered trade mark owner or by an unregistered owner who claims passing-off. A successful legal claim usually leads to an injunction- stopping all trading use of the offending mark – along with damages or delivery up of all infringing products and materials. When viewed in this light, spending a few hundred pounds on a full pre-launch clearance search is money well-spent. Even if not sued for infringement, without a search you may well find your trade mark application blocked by the Trade Marks registry or opposed by an existing trade mark owner.
So, what should I do before I settle on a new brand name or before product launch?
Our strong recommendation is that before you spend any significant sum of money in relation to a new brand name, you carry out clearance searches to make sure that it is available for use and registration, here in the UK and internationally too if necessary. While identical searches using free online registry tools are a good start, they do not provide any guarantee that your new brand name is available for use or registration. The safe option is to instruct us (or your trade mark expert) for advice on searching.
Here at the Trademark Hub, we have a wealth of experience in helping the full spectrum of brand owners – from sole traders and SMEs through to multinationals – to search, protect, and enforce their brands and designs both in the UK, in Europe, and around the world. We are always happy to answer your questions, including working with you to search and clear your brands for use and protection in the UK, the EU, and internationally.
