This article entitled ‘UK Trade Mark Search’ provides information about why a trade mark search should be carried out, when selecting a new trade mark or prior to filing a UK trade mark application. It outlines the various trade mark searches available in the UK and discusses these in relation to both registered and unregistered trade marks.
Choosing a new trade mark is not just a question of selection. You must investigate whether the trade mark is available for use and registration in the UK and that it does not conflict with prior registered or unregistered rights.
If your chosen trademark conflicts with earlier registered third party rights, the trademark owner could prevent the continued use of your trademark via an action for trademark infringement, resulting in you not only having to change your trademark but also, the payment of large legal fees and damages.
In addition or alternatively, use of your trademark could be prevented on the grounds of passing off (the law that protects unregistered trademarks), if the owner of the earlier trademark can show goodwill, that use of your trademark causes a misrepresentation, or is likely to, and that this causes, or is likely to cause, damage to the claimant.
Careful research and trademark searching can highlight potential obstacles at an early stage, before substantial financial investment is made in developing a new trademark or brand.
Initially, you should do your own research to explore whether the trademark in question or a similar trademark is already in use. The Internet is an excellent resource for this. You should investigate search engines, such as Google, and check whether potential domains are available. If they are not, you should check what they are being used for and whether the goods or services provided overlap with or are related to yours. When doing this, keep future product markets in mind. Another useful tool to research UK company registrations is the WebCheck facility, available on Companies House website. If these investigations do not flag up concerns, the next step is to conduct trademark searches for UK trademark applications and registrations.
A UK trademark search should cover the UK trademark register, the Community trademark register and the International (Madrid Protocol) register for identical and confusingly similar trademarks. Most brand owners begin with a UK trademark search for identical trademarks, which filters out direct hits. These searches can be done for free using publically available databases.
If you want to conduct more detailed trademark searches in the UK or go to market quickly, it is advisable to extend your trademark search for identical trademarks to confusingly similar trademarks. This requires a full UK trademark clearance search. It is important to use an experienced trademark search agency for this, along with a qualified UK trademark attorney, who will analyse the results and assess their relevance to your business.
Since trademark rights are territorial, if you intend to use and register your trademark beyond the UK, a trademark search should be conducted of trademark registers in countries/territories of interest. Again, a number of these national trademark registers are publicly available. There are various international trademark search packages, which cover a number of jurisdictions within a single search. Your trademark attorney will be able to advise upon available options.
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