Trade Mark Searches - Are They Important?
Before trade mark applications are filed, getting a proper search of the trade marks register completed could be one of the most valuable actions you can do.
Time is of the essence with trade marks. An application will have the date on which it was applied for and this is the effective date. In general you will have the power over anyone who tries to register the same or similar mark after you.
If a confusingly similar mark is on the register already, for similar goods or services, it could mean that someone else has acquired the rights you are seeking. The subsequent application of such a mark could end up being useless and expensive.
As UK trade mark applications are rising at a record rate, there is an increasing chance that more applications will be found to be identical or similar to pre-existing trade mark registrations. This is why we believe it is important to request a trade mark search before you apply for a mark to ensure you have a clear projection of any potential threats to your application.
If you'd like the answers to all of your trade mark questions, read this blog post about 10 Trade Mark FAQs.
How does a trade mark search work?
At Tennant IP, our clients request searches on their brand names and logos, to check the state of the register before an application is committed to. Our trade mark search report will show you if there are any similar marks on the UK registers. Some similarities may not provide an obstacle to your application, but the depth of a search will cover a wide range of possible threats.
Identical or similar goods and services will also be detected which will indicate whether a prior mark has a high chance of opposing your application. For example, if goods or services are dissimilar then you will have a very high chance of overcoming opposition proceedings, even if earlier marks are the very similar.
Our professional advice will be provided on the most relevant results, where we explain both the similarities and differences between the marks. In some cases, we may find that some marks have significant differences that will outweigh any similarities or vice versa. All of this will be followed by what we believe the chances are of any of the registrations in the report succeeding in potential opposition proceedings against your application.
If we feel there is another trade mark that could be problematic to the successful registration of your proposed application, we will tell you straight. We will always try to offer advice on strategic changes that could be included to help avoid opposition. These changes to your application may save you time and costs, compared to not requesting a search and potentially running into these issues further down the line, which could have been resolved before filling your application.
If there are no results that are concerning, the report should bring some reassurance, where we can simply advise to proceed with your application without worrying about major, potential threats.
If you are interested in learning about how a Chartered Trade Mark Attorney can help protect your intellectual property, click here to view our services.
Can you search for a trade mark on Google?
A common mistake people make when trying to understand if anyone else is using their brand name is thinking that simply googling a name and looking at the results would be sufficient.
This is not the case! The trade mark register is there to indicate proof of legal rights towards brand names. A person may have the registration for a certain name but may not have started using the name in the public domain. Trade marks have an intention to use provision, but are still valid without use for the first 5 years of a registration’s life.
Whilst most people are comfortable with internet searching, the only way to fully understand whether you can use a trade mark is through a search of the register.
Why you need to conduct a trade mark search
Search results can reveal issues which are needed to address in order to avoid further legal proceedings.
The consequences of failing to carry out a trade mark search before filing an application could have some serious consequences, including:
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Money
The obvious consequence of not carrying out a search are the financial costs.
Once an application has been accepted, your application will be published for a period of two months (in the UK), whereby third parties may choose to oppose your application and you may unexpectedly enter into opposition proceedings, which may have been assessed if a report was carried out. An application is non-refundable once filed and so if there is a clear obstacle to registration that opposes you, this is comparable to throwing money down the drain.
If you decide to fight an opposition and lose, you will not only lose all of the costs associated with these proceedings, but you will also lose the investment made into your trade mark application and you may be required to cover the costs of the proceedings for the party who has opposed your application. If a search report was requested, you will be informed of these potential threats and will be aware of all the potential costs and implications before filing.
A search report is a very low cost solution for avoiding these potential consequences and also providing peace of mind when deciding to apply for a trade mark.
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Time
Furthermore, unexpected opposition proceedings will also cost you time. Often clients want to get their trade mark registered as quickly as possible to move on with expanding their business and they might have implemented a timeframe for this. Full length opposition proceedings could last for five months at the very least, which can leave clients in a period of uncertainty as to whether your trade mark will be registered. If a report was carried out, you will be able to prepare for any potential proceedings if you decide to continue with an application whilst knowing about potential third party threats.
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Unexpected re-branding
Think about your business and how much resources have been put into materials that use your brand name? Marketing materials, signage, physical product in stock, domain names.
Also consider how much goodwill and reputation you have built up in your name – do consumers trust your business when they receive goods and services from you?
In a worst-case scenario, a third party who has registered trade mark rights for your brand name may lead to you needing a full re-brand of your business name which will result in a complete loss of your brand’s reputation and goodwill and can be a major shock to your business.
A search report can allow you to understand these threats and choosing a different brand name at an early stage, on your terms is far more preferable than trying to recoup sunk costs into marketing of a brand name that you can’t use.
Should you search for global trade marks?
You may be selling in your home territory, but export to others also. Trade marks are only valid for the territories they are registered in. For exporters, obtaining international trade mark registrations in all of the countries they are selling to is imperative.
At Tennant IP, we have the power to perform clearance searches all across the world, so if you need to know if you can sell your goods and services from Azerbaijan to Zimbabwe, we can identify prior marks and give you the expert advice.
Conclusion
All we need from our clients to search is the name of your mark and what goods and/or services you are interested in using the mark for. We offer both an identical search and a full clearance search reporting.
If you have any enquiries or further questions regarding a trade mark search or a question about trade marks in general, please do not hesitate to contact us at Tennant IP by emailing info@tennantip.co.uk or calling 01633 258792.
