Trade mark search and clearance

A trade mark is a logo and/or name that you offer to sell your goods or provide services under, also known as a brand name. Examples of registered trade marks are KODAK®, COCA-COLA®, SAINSBURYS®, SAMSUNG®, KAREN MILLEN®. The use of a trade mark enables consumers to identify your goods or services from your competitors. It is a badge of origin.

The best form of protection you can have, in particular in the United Kingdom, is a Trade Mark Registration. This is obtained by filing an application at the UK Intellectual Property Office (UKIPO). Provided the UKIPO accepts the application and no complaints are received from third parties, then a Registration is granted and a certificate issued.

Once you have a trade mark registration, you can prevent competitors using an identical or similar trade mark to yourself in respect of identical or similar goods and services covered by your registration.

It is also an indication that you are free to use your mark in respect of the goods/services covered by your registration in the United Kingdom. This will reduce the worry of being sued by another party who are of the opinion that your mark is too similar to their earlier registered right.

No. Registering a company name does not award you with the same protection that you gain through a trade mark registration, neither does it provide any assurance that you are free and permitted to use that company name.

There are various scenarios surrounding trade marks, their proprietors, and competitors.

Imagine you have spent hundreds or thousands of pounds in preparing the launch of your new brand. The day you launch you receive a complaint from a third party/competitor, which means you must pull all your stock off the market and re-brand it. This is an expensive exercise and can also result in bad press coverage. If you had conducted a trade mark search and/or filed an application at the UKIPO and obtained an examination report, you would have been able to see whether there were any conflicting applications or registrations that would prevent you using a mark. At that time, when only a few hundred pounds had been invested, you could have either thought of a new trade mark or looked at ways of overcoming the earlier right that caused concern.

Another scenario that too often happens is a proprietor starts use of his mark in a location within the UK. The business and the brand are a success and begin to grow. Then the proprietor of a registered trade mark learns of the existence of the brand and contacts you, asks you to stop using your mark immediately otherwise an action for trade mark infringement may follow. In some cases, the registered proprietors rights in respect of the registration actually post-date the date you started using your mark. Whilst there are possibilities of defending yourself in respect of an action like this, the preparation of evidence is expensive and the outcome of proceedings uncertain.

Then comes a situation where you have again built up a reputation in your brand in say Birmingham. A competitor starts using your mark in respect of inferior products or services in Brighton. It would be virtually impossible to stop that competitor if you are only able to show you have earned a reputation and goodwill in Birmingham, and not Brighton. If you had obtained trade mark registration you would be able to stop that competitor even if you are only using the mark in one area in the UK. The registration has effect throughout the entire UK.

These are just a few of the many scenarios we come across regularly. Whilst we can usually defend our client’s position or negotiate with the third party, this can be a costly exercise and one, which could have been avoided by searching the Trade Marks Register or filing a simple trade mark application and obtaining a registration.

On average we can expect to receive the first examination report from the UK Intellectual Property Office, within two to three weeks after filing an application. An application that is not subject to an adverse examination report or opposition normally matures to registration within six to eight months from the date of filing.

Whilst the application process is ongoing your rights in the mark, provided it matures through to registration, are protected from the date the application is lodged.

The registration runs for ten years from the date your application was filed. It is possible to renew a registration for further ten-year periods.

It is important that the mark is not left unused for a continuous period of five years once it is registered as this could result in it becoming vulnerable to cancellation by a third party. 

You should also ensure that you, or others authorised to use you trade mark, do not allow the mark to become the generic term for the goods available under your mark, for example did you realise that ESCALATOR was once a trade mark, but is now the generic term for moving staircases.

Before a registration is obtained we recommend that you use the TM symbol alongside your mark and where possible make a statement upon any literature/packaging used that the mark is a trade mark belonging to you i.e. SOAP is a trade mark belonging to Mr John Smith. Once the mark is registered you can substitute the TM symbol with the ® symbol and amend the statement to read SOAP is a registered trade mark belonging to Mr John Smith. 

We are able to offer advice in respect of protection of your mark overseas, making use of National and International filing systems.

Please contact a member of our trade mark team who can offer tailored advice and can help you devise the most appropriate and cost-effective filing programme.