Once you have successfully registered your trade mark in the UK, you may be looking to expand your reach into Europe and to outsource some of your production or manufacturing processes within the EU.
In this article, our trade mark lawyers explain the importance of conducting EU trade mark clearance searches, the costs involved and the risks of not conducting a clearance search.
Contents:
- What are the risks of not conducting a trade mark search?
- What are the different types of trade marks searches?
- How to review the search results and how do you assess the risk level they pose?
- Should I be worried about trade marks that are not registered?
- How much does it cost to carry out a European Union trade mark search?
- How long can it take to conduct a European Union trade mark search?
- Summary
What are the risks of not conducting a trade mark search?
The first step in the process is to understand if your mark is available to use and register in the EU. The purpose of a trade mark search is to identify and eliminate, if possible, any risk associated with expanding your brand abroad. The risk of not conducting searches usually far outweighs the cost involved since the consequences of adverse search results could lead to you being unable to register your mark or having to spend time and money fighting opposition procedures during the registration process or even finding your business subject to infringement proceedings in court.
What are the different types of trade marks searches?
There are several different types of trade mark clearance searches, they include:
Searches of the EU Register and the WIPO Register
These searches are particularly important since upon publication of your application, the EU registry will send a surveillance letter to the owners of any earlier identical or confusingly similar EU trade mark registrations, applications or international registrations designating the EU, informing them of your application and how they can oppose it.
There are different options for the scope of the searches:
Direct hit or ‘knock out’ searches: These involve initial screening searches for identical or virtually identical marks that cover the same or similar goods and services. They can be useful to give you an initial idea as to whether your chosen mark has any prospect of successful registration or if is a definite “no go”. Where your budget does not stretch to full clearance searches, it is at least advisable to obtain a knock-out search of the EU Register.
Full clearance searches: A full clearance search will list identical and similar marks that are registered for identical and similar goods and services but may also extend to identifying identical and similar marks for a wider range of goods and services if the trade marks are well-known or have a reputation that warrants them wider protection. Full clearance searches may also include searches for unregistered trade mark rights that could restrict your ability to use your chosen mark in commerce. You should also consider how your mark will translate into one or more of the languages of the EU and include some of the most common translations in your searches. This option can usually be selected when ordering a search from a third party search platform and your solicitor will be able to assist you in doing this.
EUIPO Registry’s own searches: The Registry does conduct its own searches and will send out a surveillance report if you have requested this at the time of filing your EU application. Although, it may be too late to take remedial action once you have already filed your application and so this report should not be relied on as a substitute for your own, prior, full clearance searches.
Searches of the national Registers of the separate EU countries: As well as registered EU trade marks, your EU trade mark application could also be opposed by the owner of an identical or similar mark that is registered in one or more individual countries of the EU. This is because your EU trade mark will give you rights in each of the EU member countries. For example, someone may own an identical mark that is only registered in Poland. If this trade mark owner were to discover your EU application, they could file an opposition against it based on their prior Polish national mark. The risk of oppositions based on national registered marks is lower than those based on EU registrations as the national trade mark owners will not be notified of your application so you may decide that the risk does not justify the cost of individual country searches. If you are aware that there could be problematic registrations in a particular country, you could add this country to your search list or ask your trade mark solicitor to obtain the advice of a local attorney in the country in question.
Unregistered trade mark searches: These are explained below and are also recommended to ensure that you are free to use and register your chosen mark within the EU.
How to review the search results and how do you assess the risk level they pose?
This can be quite a complicated process, especially given the number of results that may initially be generated from a full clearance search. Even if your mark appears safe to use and register in relation to the EU register, given the diversity of languages and cultures across Europe, there is a risk that it could create confusion among consumers in one or more individual member countries.
In general, a mark must not be identical or confusingly similar to a prior registered or unregistered trade mark for the same or similar goods and services. Similarity is assessed in terms of visual, aural and conceptual aspects and the mark will be considered as a whole, although the individual words and elements will have differing degrees of relevance depending on how important a role they play in the mark as a whole. Whether one mark is a translation of the other in another language is also relevant if a considerable part of the public in the EU are likely to be familiar with both languages. For example, the following marks could be considered to be confusingly similar:
- V FACE in Class 3 for skincare and VEE VISAGE in Class 3 for cosmetics
- DOG YUMYUM in Class 31 for pet food and CHIEN YUM in Class 31 for pet food
If an identical or similar mark is registered in a different Class of goods or services, the risk of confusion will depend on how similar those goods and services are and whether they are complementary or competing. If a mark is identical or highly similar but is registered for very different goods or services and trades in a completely different industry, for example, cosmetics and mining, there may be no risk of opposition or infringement. Where the prior mark has a very wide reputation or is registered for more similar goods and services, then there may be a conflict. Due to the complexities of interpreting the search results and the nuances of trade mark law, it is advisable that you use a trade mark lawyer to conduct the clearance searches and analyse the results in order to properly assess the level of risk involved.
Even if a prior mark presents a high level of risk on paper, your IP lawyer may be able to recommend a solution that would still enable you to register and use your chosen mark. For example, it could be the case that a similar mark has not actually been used in commerce for over five years and so the registration could be revoked on grounds of non-use. Or the owner of the prior mark may have registered it for a wider set of goods and services than they actually end up using it for. A solicitor could contact them with a view to obtaining a “coexistence agreement” so that you can both trade alongside each other for your respective goods and services. Other solutions could also be considered, such as apportioning the territories in which each party trades or obtaining a license from the other party to use their mark, subject to payment of a license fee.
Again, this is why a solicitor’s advice is important before you decide on a particular mark as there may be an easy solution to overcome a perceived threat or obstacle, of which you are not aware.
Should I be worried about trade marks that are not registered?
Registry searches for prior registered marks are not the only checks that you should conduct prior to filing your EU trade mark application. Common law searches are also highly recommended. These consist of checks for unregistered trade marks that are in use in commerce within the EU and/or have a reputation in the EU and so have protection under the law governing unregistered trade marks or unfair competition. These marks may not show up in official trade mark databases as they have not been registered but they could still pose a risk. Common law searches can include searches of the Internet as well as social media, company registries, domain names, news and industry media sites, advertising databases and online retail platforms. If you find that a third party has already started using a similar trade mark, in relation to the provision of similar goods and services, you may need to conduct further investigations to try to ascertain when they started trading using their mark and whether this was after you started to trade in the EU and/or filed an application to register your mark there.
How much does it cost to carry out a European Union trade mark search?
An trade mark solicitor will usually obtain a list of applications and registrations for identical and similar marks from a third party search platform and then filter, review and analyse these marks and present a filtered list in a report to you, together with their advice. There is normally a fixed fee for obtaining the search results and then an hourly charge for the solicitor’s time in reviewing and analysing the results. Many hundreds of results may be generated initially so it can take many hours for the solicitor to go through these. If you want the searches to be expedited, you can usually pay for a quicker turnaround, both from the solicitor and the third party search platform.
How long can it take to conduct a European Union trade mark search?
You will need to instruct your trade mark solicitor to begin the searches as soon as possible and within enough time to be able to re-evaluate your plans before any anticipated product launch. At the very least you will need to leave sufficient time for the search results to be analysed and reported and for your EU trade mark application to be prepared and filed at the Registry. Two weeks before your anticipated product launch may not be sufficient if the search report discloses anything problematic. In an ideal world, you would be able to wait until the EU trade mark is registered before launching your business in the new territory.
The best time to conduct trade mark searches is a few months before your intended launch date.
Summary
As you can see, trade mark searches are an important step in securing a registered EU trade mark. A combination of thorough research, analytical judgment and understanding of the legal and commercial aspects involved is necessary in order to properly interpret any clearance searches and understand the level of risk involved.