Why conduct a trade mark availability search?

What is a trade mark search and why is it needed?

There have been many examples of businesses launching a new brand to only then be challenged by a third party, which results in either the business dropping the new brand or getting embroiled in litigation.

A trade mark search enables a business that wants to launch a new brand to identify if it can be registered and used in a particular country or territory. In particular, the search identifies if any third party has earlier conflicting rights (usually identical or similar marks) entitling that third party to prevent the use and registration of the new brand.

By carrying out such a search and identifying potential obstacles to the use and registration of the new brand, a business can take steps to mitigate the risks and avoid the embarrassment and wasted costs of launching a new brand to only then withdraw it.

It is therefore important that a trade mark availability search is carried out as soon as possible and ideally before a new brand is used in a particular country or territory. Moreover, if a business is considering several different brands, availability searches are a useful way to whittle down the options.

How to carry out a trade mark search?

Whilst searches can be conducted through Google as a basic starting point, such searches are not comprehensive and will only generally identify identical or highly similar trade marks being used. This can be problematic, as often trade marks are not being used or have been registered for more goods and services than are currently offered by the third party.

Trade mark searches are searches of the trade mark registers in the relevant countries to determine if there are any earlier identical or similar trade marks covering identical or similar goods or services. These searches are conducted using bespoke third-party software and are far more extensive than similar searches done through a trade mark registry database (where one is available).

In addition, we recommend that clients undertake an unregistered trade mark search to identify if any third parties are using an identical or similar brand in the UK that may not be registered, but which may be an impediment to the use and registration of a proposed brand.

The cost of a search is relatively low in comparison to the costs of having to deal with the various issues arising after a brand is launched where it is subsequently discovered that there are conflicting trade marks. These searches are done on a country-by-country basis. So, if you are using the brand in the UK and have a UK trade mark, this does not mean you are free to use the mark in, say, Germany or the US. You would need to undertake searches in those jurisdictions to determine this.

Through our extensive network of correspondent law firms, we can assist clients with clearing new brands throughout the world.

What happens if we find a conflicting trade mark during the trade mark search?

If the search results reveal the existence of any conflicting trade marks, we will be able to advise you on how to mitigate those risks. Recommended steps may include:

• filing the new brand in a logo form or with other distinctive features;
• not covering certain goods and services;
• investigating if the third party is using its earlier mark and, if not, advising on the likelihood of removing the earlier mark from the register through a non-use action; and
• seeking an amicable resolution with the third party.

If you would like to know more about trade mark availability searches, or if you would like to instruct us to carry out a search for your brand, please contact us at [email protected].