Trade mark searches are a crucial aspect of your business’s brand protection strategy. They allow you to discover whether your proposed branding, or something similar, is already registered as a trade mark. If it is, you might be unable to obtain trade mark protection for your brand. The nature and extent of the trade mark searches you will need to do depend on several factors, including the goods or services your business offers and where you intend to trade.
In this guide, our trade mark solicitors will explain why it is important to conduct a trade mark search at the outset of any branding project, how to carry out a trade mark search and what to do with the results.
Contents:
Why you should conduct a trade mark search
A registered trade mark can be a business’s most valuable asset and is a vital element of any effective brand protection strategy. As such, trade mark registration should be a priority for any business seeking to build a brand, whether in respect of its business name and identity or that of a new product.
An application to register branding as a trade mark may fail if it is too similar to a pre-existing mark and the owner opposes it. Furthermore, your use of such branding may result in infringement proceedings to prevent further use and damages. Both eventualities can have serious consequences. You could lose the valuable time and money spent on developing the brand, sacrifice the goodwill associated with it, be forced to destroy stock and have to incur additional time and expense on rebranding. It is, therefore, crucial to check that any proposed branding is not too similar to any already in use at the earliest stages of brand development. Trade mark searches are the most important aspect of this process. An effective trade mark search will identify pre-existing registered marks that may impact your branding plans and allow you to address the issues at an early stage.
If your trade mark searches identify a pre-existing mark that may cause problems, our experienced trade mark solicitors can help. They will review your plans against the pre-existing registrations and suggest modifications to maximise your chances of registration and minimise those of infringement. Further, there may be scope to challenge the pre-existing mark and effect its removal from the Trade Marks Register. For example, if the other businesses trade mark has not been used for 5 years since registration, it might be vulnerable to revocation. Our trade mark solicitors will consider whether revocation, or any other legal challenge, might apply and act accordingly.
Alternatively, our solicitors might open negotiations with the trade mark owner aimed at reaching a co-existence agreement. In a co-existence situation, you are permitted to use the branding in specific circumstances agreed with the other party. For example, you may agree to use your branding only in connection with goods or services that do not overlap with those of the trade mark owner.
Supplementary searches
Whilst registered trade marks offer the most comprehensive form of brand protection, other laws also apply. The most prevalent is ‘passing off’, often referred to as an ‘unregistered trade mark right’. It operates to prevent businesses from implying that their goods and services are in some way connected with those of another undertaking when they are not.
The remedies available in a successful passing off claim are similar to those for trade mark infringement, primarily an injunction to prevent further use and damages. However, the evidence required is more extensive and passing off claims are, on the whole, harder to prove than those for trade mark infringement.
Nevertheless, it is sensible to conduct searches in addition to your trade mark ones to ascertain whether any branding is already in use but not registered as a trade mark. Such investigations might include company and domain name searches and more general ones relating to your industry. Our trade marks solicitors will advise on the searches relevant to your circumstances and can undertake them on your behalf.
Where can you conduct a trade mark search?
The UK Intellectual Property Office (IPO) keeps a register of trade marks that can be searched online on the IPO website. The Trade Marks Register is a comprehensive database of registered trade marks effective in the UK. It does include most - but not all - categories of trade marks that have been applied for but are not yet registered (it excludes international marks that have not yet reached the "UK stage" of their registration journey). It does not include any non-registered marks that might be protected by other laws, such as passing off. It is, therefore, important to conduct thorough, comprehensive searches of both the Trade Marks Register and other relevant sources (such as Madrid Monitor) to ensure results are as reliable as possible.
How to carry out a trade mark search
The IPO website allows you to conduct an online search of the Trade Marks Register in three ways:
- By keyword, phrase or image
- By trade mark owner
- By trade mark number
When developing a new brand, the most useful search will likely be the keyword, phrase or image. This will identify any registered marks that are the same or similar to your proposed branding. The owner search offers a convenient way to review your competitors’ marks, and searching by trade mark number enables you to access a specific mark swiftly, without having to sift through irrelevant results.
A search of the UK IPO database will reveal all national and Brexit equivalent trade marks, together with various others filed under specific international registration schemes. It will not provide details of all global trade marks. Trade mark rights are territorial. Each territory keeps a register of trade marks registered there. Branding that might be unproblematic in the UK might be too similar to a trade mark registered elsewhere. So, if you intend to trade worldwide, you might need to consider a wider search.
However, the cost of conducting international trade mark searches can be prohibitive, and few businesses can afford to undertake searches in every country. A judgment call is required, and a compromise needs to be reached between diligence and cost. Our trade mark solicitors will assess the risks attached to your branding strategy and advise on an acceptable level of thoroughness having regard to your cost constraints. This might involve limiting the searches to your key markets.
Trade mark searches can be difficult to conduct effectively. Their purpose is to manage risk, and unless you have very deep pockets, the level of risk needs to be weighed against the cost of an exhaustive search. Logo or other pictorial searches, in particular, are notoriously challenging. They require the application of numerous codes, or the use of specialist software, and a comparison of the results by a trained eye. It is, therefore, advisable to enlist the help of an experienced trade mark solicitor to undertake the searches for you. Our experienced trade mark solicitors will limit the search to what would be reasonable in the circumstances. They might confine the search to specific goods or services, or restrict it by date range.
What to do once you have carried out a trade mark search
Once you have completed the necessary searches, you need to analyse the results and consider their impact on your proposed branding strategy.
Trade mark law applies to both identical and ‘confusingly similar’ marks, so a mark does not need to be identical to a pre-existing one to run into difficulties. The concept of ‘confusingly similar’ is a thorny one and has been tested extensively in the Courts. Legal advice is required to assess whether your proposed branding would be deemed ‘confusingly similar’ to any pre-existing mark revealed by your trade mark searches. That assessment requires an appreciation of the relevant statutory provisions and an understanding of the extensive case law.
If the search reveals that your branding is already in use, don’t panic. If you are at an early stage and able to rebrand, our solicitors will advise whether it is necessary to do so. If you do not want to rebrand – because you are already trading, for example – you may have other options. You might be able to modify your branding to limit the impact of the pre-existing mark. Alternatively, our trade mark solicitors will consider challenging the validity of the earlier mark or seeking a co-existence agreement with the trade mark owner, whereby you agree to use the branding only in agreed circumstances.
The trade mark searches may reveal a registration for the same word written in a different case to your proposed branding; it might be in uppercase, whilst yours is in lower. Generally speaking, unless the pre-existing mark is for a logo as opposed to words, a difference in case will not overcome the risk of the trade mark owner objecting, or you being liable for infringement. Where the words are incorporated into a picture or logo, any differences will be taken into account when considering whether they are so alike as to be ‘confusingly similar’.
UK trade marks are divided into 45 classes covering different goods and services. A registered trade mark does not afford its owner a monopoly over the mark in respect of all goods and services but, rather, the ones they have specified. If your searches reveal a pre-existing mark covering goods or services that differ completely from yours, you should still be able to register your branding and use it without risk of infringement. If there is a similarity between your goods or services and those the trade mark is registered for, the concept of ‘confusingly similar’ comes into play and a risk assessment is required. Specific rules apply where the pre-existing mark is a ‘well known mark’ since these enjoy enhanced protection in certain situations.
Registering your trade mark
Once you are satisfied that there are no issues with your proposed branding, you should apply for a registered trade mark as soon as possible.
The widest form of protection is provided by a word mark, and the requisite trade mark searches are usually more straightforward and cheaper to carry out than those for logos or pictures. So, if cost is an issue, applying to register your brand as a word mark is often the advisable first course of action.
Alternatively, you can incorporate your brand name into a logo, and apply for a trade mark on that basis. This type of mark is less flexible than word marks and the protection provided is narrower, but they can offer a sensible compromise when you do not want to rebrand but cannot obtain a word mark. Further, logo marks can be invaluable to established businesses whose logo has become synonymous with their brand; Apple, or Chanel, for example.
Summary
Trade mark searches are an integral part of any branding exercise. They provide peace of mind that your brand will be eligible for protection as a registered trade mark and will not infringe third party rights. Experienced trade mark solicitors will consider your commercial goals and carry out a risk assessment to ensure your search parameters are sufficient, yet reasonable. They will analyse the results, consider their impact on your branding strategy and advise on the likelihood of achieving trade mark registration. If any pre-existing marks might be problematic, they will work with you to decide on the best way forward. This might include modifying your branding, seeking to revoke the pre-existing mark or negotiating a co-existence agreement. Once the searches have been completed and any required action undertaken, you can concentrate on building your brand with the knowledge that you will be able to protect it against copycats.
