When registering a trade mark it is important to know what's out there
But a quick trade mark search on the registry is only the start of ensuring your brand has the go ahead...
Words by Dr Martin Douglas Hendry
If you're considering registering a trade mark in the UK, it's important to search the trade mark registry to ensure that your desired trade mark doesn't conflict with existing registrations. In this blog post, we'll guide you through the process of searching for a trade mark, interpreting search results, and applying for a trade mark registration.
Trade mark registration is an important step for businesses to protect their brands and distinguish themselves from competitors. The UK trade mark registry, also known as the Intellectual Property Office (IPO), manages the registration of trade marks in the UK. In this blog post, we'll provide you with a step-by-step guide to searching for a trade mark and identifying whether a trade mark registration should be registered.
Understanding Trade Marks
Before we dive into the search process, let's review some basic information about trade marks. A trade mark is a symbol, logo, word, phrase, or combination of these elements that represents a brand or business. Trade marks can be registered or unregistered, but registration provides greater legal protection for the owner of the mark. There are several types of trade marks, including (but not limited to):
- Word marks: Consist of words or letters, such as Nike or IBM
- Logo marks: Consist of a visual design or symbol, such as the Apple logo
- Slogan marks: Consist of a catchy phrase or tagline, such as "Just do it" for Nike
- Combination marks: Consist of a combination of words and images, such as the Starbucks logo with the word "Starbucks" and an image of a mermaid
When choosing a trade mark, it's important to select a unique and distinctive mark that doesn't conflict with existing registrations. This is where searching the trade mark registry comes in.
Conducting a Trade Mark Search
To search for a trade mark in the UK, you can use the IPO's online search tool. There are different types of searches available, including a preliminary search, a full search, and a trade mark watching service. For the purposes of this blog post, we'll focus on conducting a preliminary search.
To conduct a preliminary search, follow these steps:
- Go to the IPO's search tool
- Enter the trade mark you're interested in searching for, using quotes if it's a phrase (e.g., "ABC Company")
- Review the search results to see if any similar trade marks exist
- If you find a similar trade mark, review the details of the registration to determine if it conflicts with your proposed trade mark
It's important to note that a preliminary search is not a comprehensive search and may not identify all potential conflicts. For a more thorough search, consider using a professional search service, such as offered by Virtuoso Legal and other law firms who specialise in trade mark registration.
Identifying Potential Conflicts
When reviewing search results, it's important to carefully consider any similar trade marks that appear. Look for similarities in the mark itself, as well as in the goods or services for which the mark is registered. If you find a similar trade mark, review the details of the registration to determine if it conflicts with your proposed trade mark.
The issue of similarity can be complex, as it involves assessing the overall impression of the marks, taking into account their visual, phonetic, and conceptual characteristics. In practice, this means that even marks that are not identical can still be considered similar if they share certain visual or conceptual elements.
If the Intellectual Property Office (IPO) determines that your proposed trade mark is too similar to an existing mark, they may refuse your application or require you to make changes to your mark. This can result in delays and additional expenses, as well as potentially losing the opportunity to secure legal protection for your brand.
One challenge with conducting a trade mark search on your own is that it can be difficult to accurately assess the similarity of marks. This is because people may unconsciously introduce bias into the process, by focusing on the differences between their proposed mark and existing marks and overlooking potential similarities. In contrast, a trade mark attorney or agent has the legal training and experience to accurately assess the similarity of marks and provide guidance on how to avoid potential conflicts.
Applying for a Trade Mark
If you've conducted a search and determined that your desired trade mark doesn't conflict with existing registrations, you can proceed with applying for a trade mark registration.
Whilst we do not recommend that people self-file trade marks, as the risk of registering a weak brand or receiving an opposition is significant. However, for those who have experience and expertise in the area, it can be possible to secure distinct and broadly enforceable brands.
To apply for a trade mark in the UK, follow these steps:
- Go to the IPO's online application service
- Complete the application form, providing details about your proposed trade mark and the goods or services for which it will be used
- Pay the application fee, which varies depending on the type of mark and the number of classes of goods or services
- Wait for the IPO to review your application and provide a decision
The application process typically takes several months, and it's important to ensure that your application is complete and accurate to avoid delays or potential rejections
Note any rejections, oppositions or cancellations will often result in the loss of the original fee and a requirement to start from square one. As such, it is important to be absolutely sure that your brand has the go-ahead before seeking its registration, as an inaccurate registration will likely open a legal can of worms.
The Importance of Professional Help
While conducting a preliminary search and submitting a trade mark application may seem straightforward, the reality is that the trade mark registration process can be complex and challenging. This is particularly true when it comes to identifying potential conflicts and determining the appropriate classification of goods and services.
Seeking professional help from a trade mark attorney or agent can help ensure that you navigate the trade mark registration process successfully. A trade mark attorney or agent can offer several benefits, including:
A trade mark attorney or agent has experience with the trade mark registration process and can guide you through each step of the process. They can also provide insights on how to maximize your chances of successfully registering your trade mark the first time around and with as little fuss and expense as possible.
A trade mark attorney or agent is well-versed in trade mark law and can provide you with the legal guidance and support you need to protect your brand. They can help you assess the strength of your trade mark and determine the appropriate classification of goods and services. They may be able to adjust your application or offer suggestions for tweaking the brand to increase distinctiveness and scope of protection.
While it may seem counterintuitive, seeking professional help can actually save you money in the long run. A trade mark attorney or agent can help you avoid potential rejections, delays, or legal issues that can result in additional expenses down the line.
Peace of mind
By working with a trade mark attorney or agent, you can rest assured that your trade mark registration is in good hands. This can give you the peace of mind you need to focus on growing your business and building your brand.
Overall, seeking professional help is an important consideration for any business that is registering a trade mark. While it may involve an additional expense, the benefits of working with a trade mark attorney or agent typically far outweigh the costs. So, if you're considering registering a trade mark, be sure to explore your options for professional help and find the support you need to protect your brand.
Registering a trade mark is an important step for businesses to protect their brands and distinguish themselves from competitors. By searching the trade mark registry and identifying potential conflicts, you can ensure that your proposed trade mark is unique and distinctive. If you're uncertain about the search process or need guidance on applying for a trade mark registration, consider seeking professional advice from a trade mark attorney or agent. With the right strategy and support, you can successfully register a trade mark and safeguard your business's brand identity.
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Virtuoso Legal is a team of intellectual property specialists based in Leeds and London - operating worldwide. Virtuoso Legal's team of IP experts have successfully tried cases in the IPEC, High Court, Court of Appeals and United Kingdom Supreme Court. In addition, the team assist companies in creating, commercialising and protecting the big ideas that make their business unique. The firm and its professionals are ranked yearly in legal directories such as the Legal 500 and Chambers and Partners, cementing their status as a Top 2% law firm in the world.
DISCLAIMER: The content within this post is for educational purposes only and does not constitute legal advice. Virtuoso Legal does not take any responsibility for those that use this information and waives any liability for any resulting effect on your personal or commercial circumstances.