Trade Mark Searches

Why are trade mark searches so important?

Rachael and Bill Ward of Ward Trade Marks

Rachael and Bill Ward of Ward Trade Marks

Trade mark searches are the first step to making sure your trade mark application is successful and the money that you invest into your brand’s creation is not wasted.

If your chosen mark already exists (or there is one very similar to it), your application will be rejected. That means the initial fees are lost and you’ll have to pay them again when you resubmit a new application.

However, working with our team during this vital stage of the process means we’ll make sure your chosen trade mark is unique. And no, a quick Google search is not sufficient.

Search strategy pitfalls

A poor search, a search for just the ‘identical’ mark, or no search at all, could lead to action being taken against you by a third party. For example, if you attempt to register a trade mark that is the same or similar to an existing mark, for the same or similar goods or services, you could end up facing a trade mark opposition. Worse still you could end up facing an action against you for trade mark infringement which means that you might have to rebrand and a lot of money is wasted.

That’s why it’s essential to make sure thorough searches are done before submitting your trade mark application.

Searches reduce the risk of problems later

Our team leaves no stone unturned when it comes to the validity of your trade mark. On top of the usual comprehensive searches of the UK and EU Trade Mark Registers, we can also search company names and domain names. We can look at other sources for unregistered trade marks, and conduct enquiries as to whether a particular mark is in use by its registered owner, or when it was last used.

The rest of this page will explain more about the process searching and clearing trade marks before applying for trade mark registration. You will learn about the different types of trade mark searches and how they work.

After doing the necessary searches, we’ll give you a report telling you if you can use (and register) the new trade mark, identifying any potential issues and advising on the level of risk involved. Then, it’s over to you to make an informed decision about whether you want to go ahead with the registration process.

To make a no obligation enquiry about searching and registering your trade mark, please either call us on 01284 619000 or Click Here To Make An Online Enquiry and we will be delighted to help you.

One of the greatest assets of any brand is it’s IP. Working with Rachael is a joy – her professional insight, experience and clear (no jargon) communication enables you to make informed decisions about how and where you protect your brand. Whatever stage of business/brand development you are currently at, I’d recommend speaking with Rachael, to find out what you can protect and the best ways to achieve a robust solution, that’s fit for purpose.

Andy Boothman, Dress Code Shirts

Free Guide: Everything A Business Owner Needs To Know About Trade Marks

The guide will explain to you in detail the essentials of trade mark protection including:-

  • Choosing a distinctive brand name – why a good choice will resonate with your customers and reduce your advertising and marketing spend.
  • The importance of avoiding the descriptive/ generic trade mark trap.
  • The importance of pre-filing searches – done the correct way – to avoid future legal action against you and the risk of having to rebrand.
  • Strategy on when to time your application.
  • Realising the value of your trade mark – why your trade mark is considered an asset on your balance sheet.
  • The importance of maintaining and enforcing your registered trade mark rights once your mark is registered.

Simply enter your details below to receive this guide instantly:

What types of trade mark searches are there?

Watch-out-Is-a-competitor-about-to-register-your-trade-markThere are a few different types of trade mark searches which can be done, and which produce different levels of results.

  • An identical search is the lowest level of search which looks at the trade mark registers. These may be done online via free and accessible databases, and are the most cost-effective option. However, in most cases these searches will only reveal the identical mark, and do not find marks which are slightly different, and which could still constitute an infringement risk.

For example an identical search for SILVER SILHOUETTE would not find SILVA SILHOUETTE, SILVER SILHUETTE, and so on. This means that identical searches have very low effectiveness when it comes to clearing a mark, and are really only useful in considering whether to progress to a full search.

  • screening search is a step up from an identical search, and looks to find near-identical marks, with a minimal level of analysis thereon. For example, a screening search for SILVER SILHOUETTE should find SILVERED SILHOUETTE, SILVA SILHOUETTE or SILVER SILHUETTE, and your attorney should advise you that these would be a problem. While this is more effective than an identical search, it may not find all conflicting marks.
  • full clearance or ‘availability’ search is the most comprehensive search available. It is conducted using specialist software, and the results are analysed by an experienced trade mark attorney who interprets them based on their knowledge of what is similar and not similar, according to case law and practice. It therefore includes an opinion as to whether the mark is available for use and registration in the country concerned. A full search for SILVER SILHOUETTE would find GOLD SILHOUETTE and SILVER SHADOW.

Equally if you had ideas to use any of the following marks in respect of coffee: STARBASE/ STAR BASE, STARBOSS/ STAR BOSS or STAR BOSS, STARBUX or STAR BUX, the search would find STARBUCKS. The software is clever enough to search a one word trade mark and split it so that it finds results for visually or phonetically similar words or syllables.

A full clearance search for a particular country must be conducted and interpreted by an experienced trade mark attorney that practices trade mark law in the country concerned. For example Ward Trade Marks can can advise you on trade mark clearance in the UK and the EU, but not, say, in the USA or China. For trade mark clearance advice in overseas countries we would outsource the work to a trusted trade mark lawyer in the country concerned.

Note: A trade mark availability search is the only one that give you ‘clearance’ to use and register your chosen trade mark.

Which trade mark search should I go for?

Whether you choose to conduct a search, or which level of search you go for, depends on many factors, including:

  • Risk – A factor is the level of risk that you are comfortable with. Do you want to do as much research as possible, or are you comfortable to take any problems in your stride if and when they do come up?
  • Descriptiveness – If the mark describes the goods or services, then searches will not be so relevant, as descriptive trade marks are not seen as registrable. The searches could come back showing no results, but this may be a false negative, as the descriptive mark could not be registered in any case.
  • Is the trade mark already in use? – If the mark is already in use, and has been for some time, there is a tendency to expect any problems to have already been encountered, though this cannot be guaranteed.
  • When is launch? – If launch of the mark is not imminent, an option is to file an application and see whether it gets through to registration without objection or opposition from any other businesses. While we have shown above that a search can find other potentially conflicting rights, it cannot tell you whether or not the owners of those rights are going to oppose your application. Sometimes the only way to find out for sure is by filing for your chosen trade mark and seeing whether your attorney can help you navigate the application through to registration.
  • Relevant law – In certain countries a company will have have to pay higher damages if an infringement action goes against them, and they cannot show that they conducted a search before using the mark there.

In some instances where the trade mark is to be used in several countries, it is possible to search or file a UK application and see how that application progresses, before extending the searches or applications to overseas jurisdictions. If overseas applications are filed within six months of the first application, by virtue of the Paris Convention we can claim the same filing dates as that of the first UK application. This means that, in effect, you have not lost any time during the six month period which is a very useful benefit.

Rachael Ward provided us with excellent service over a period of over three years. Rachael is a very practical and pragmatic trade mark attorney: she gets quickly to the heart of a problem and is extremely efficient in her work. She has an excellent depth of knowledge about trade mark law, but never allows this to get in the way of clear-sighted, practical advice. I would strongly recommend any business to use Rachael Ward and Ward Trade Mark Services for trade mark matters.

Dr. Duncan Curley, Innovate Legal

Limitations of the searches

Searches are not perfect, and as you may expect, the free databases should be treated with skepticism. In general, the software used for trade mark searches is always subject to limitations, such as bad data, human error, marks in use but not on Trade Mark Office records. Moreover, other limitations apply such as applications filed too recently to show up on the IPO records due to the time lag of inputting the new data, applications filed within the last six months giving rise to a Paris Convention priority claim for as yet unfiled UK or EUTM applications. It is very rare for problems to arise from these limitations, but it is possible.

Costs – please call us to obtain a free quote

  • Identical Search – The results provided free of charge – but it is strictly an identical search only.
  • Screening Search – The precise cost is driven by the exact trade mark and the number of classes to be searched. If the name incorporates a popular word(s) the charge will be a little more because of the high number of results requiring analysis. We can give you an accurate quote once we have details of your proposed trade mark.
  • Full Clearance Search – Normally carried out for the UK and/ or the EU registers. The cost depends on the trade mark, the number of classes and the urgency. We can give you an accurate quote once we have details of your proposed trade mark.
  • Full clearance Search Overseas – price estimates will be given on request, country by country.

Conclusion

We recommend full searches, as these give someone launching a new trade mark in a country the most complete picture of whether they are likely to meet with an action for trade mark infringement. That said, while we recommend searches, they are not mandatory, and are not undertaken by everyone. During the application process, the Intellectual Property Office concerned will review the mark and conduct its own search for prior rights. Many businesses will rely on this search rather than request their own, especially where the cost of the application would be on a similar level to the costs of searching. If too many conflicts are found, or if these conflicts are insurmountable, the business may decide to abandon the application, and choose another mark – which is the same juncture that you may be brought to having conducted a full search prior to filing.
In the end the decision is for you as the business owner after weighing up the risks.

The world of trade marks is very specialist and there is no one other than Wards that I would recommend.

Sarah White, founder – Network IN

To make a no obligation enquiry about searching and registering your trade mark, please either call us on 01284 619000 or Click Here To Make An Online Enquiry and we will be delighted to help you.

Make an Enquiry

To make a no obligation enquiry, please either call us on 01284 619000 or make an online enquiry and we will be delighted to help you.

Make an Enquiry