Clearance searches are the most vital part of trademark registration.
Understanding what it takes to clear a trademark before registration is the key to a brilliant brand.
Photo by Marten Newhall on Unsplash
Words by Hallam Whitehead
Introduction
When registering a trademark (or "trade mark" as it is spelt in the UK), it is important to make sure that the brand you are registering is not being used by an existing entity.
There are a couple of reasons for this.
Firstly, a distinct brand stands out amongst competitors and provides a unique identity for your goods and services.
Secondly, from a legal point of view, if your brand is identical or similar to an existing entity, an attempt to register can result in a trademark opposition or infringement claim. In such cases, your ability to use the brand may be limited, or indeed, stopped altogether. In these circumstances dealing with the procedure is often a costly and time-consuming exercise.
As a result, it is important for businesses to conduct thorough searches beforehand to avoid the negative consequences of using a brand that is unavailable - and maximise the ability to claim a distinct and appealing brand.
Conducting a trademark clearance search is a vital step to undertake in advance of filing a trademark application which is hugely beneficial in providing the applicant with peace of mind and a degree of security when they come to file a trademark application.
This guide explains:
- why it is important to conduct a clearance search
- how and where you can look at trademarks yourself
- what issues can arise
- what a professional search offers, and more.
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Do you want to search for a trademark and need professional help? Click the button below to get in touch with our team of specialists, who will provide you with a recommended course of action.
Why search for a trademark?
Clearance searches, done correctly, remove a substantial element of risk from the trademark application process and enable the applicant to proceed to file their application from an informed position of strength.
In those instances where a search uncovers problems, the applicant is in a position to change their strategy without wasting time and resources on an ill-fated application.
For example, in most circumstances where clients contact Virtuoso Legal having received an opposition to their application, we find that they have not conducted a clearance search prior to filing their application.
As stated above, a clear awareness of what is "out there" already helps business owners secure the most distinct brand, legally and commercially.
Where can I search for a trademark myself?
Anyone looking to conduct their own preliminary trademark searches can use the online database facilities available on both the UKIPO, EUIPO and WIPO websites, where you are able to search by trademark name or registration number.
You can search the United Kingdom IPO Trade Mark Database here.
You can search the European Union IPO Trade Mark Database here.
You can search the World Intellectual Property Global Brand Database here.
Searching for trademarks using these databases will provide details of the filing date, classification, specification, and the owner.
Note that whilst conducting a search yourself can be helpful and indicative of what is out there - it should not be considered an ironclad foundation for a trademark application.
The next section explains why this is the case, and why it is recommended to seek professional help when it comes to trademark searching.
What are the issues that happen without help?
Whilst the search facilities available for free use online are very useful to determine whether specific trademarks have been registered, the tools available online do not allow you to comprehensively search for trademarks that are similar to yours.
Therefore, their usefulness in terms of informing you whether a trademark is registerable is limited.
These tools are best utilised searching for:
- details of a specific trademark
- to see all of the trademarks registered by any particular party, or,
- to see whether any trademarks have yet been registered for a particular word
In order to comprehensively assess whether a prospective trademark is likely to successfully pass through to registration, or whether that application is likely to be opposed, instructing intellectual property specialists to conduct a trademark clearance search is a must.
What is a professional trademark clearance search?
A trademark clearance search is a thorough search of the relevant trademark registers against a chosen brand which provides the searcher with a full overview of any similar or conflicting trademarks which are already registered in the jurisdiction.
We strongly recommend that all clients conduct a professional clearance search in advance of filing a trademark application.
The primary purpose is to uncover existing registered trademarks which may be confusingly similar to your chosen brand and which may subsequently form the basis of an opposition against your application.
Trademark search specialists such as Virtuoso Legal provide brand owners with detailed due diligence around their proposed trademarks.
Here, the professional clearance search highlights key areas of opportunity and risk. This is typically followed by a set of recommendations to tweak the submission.to maximise brand coverage and minimise the risk of opposition or other negative consequences.
A professional clearance search for a UK mark in a single class typically costs ~£500 - however the cost of remedying mistakes after the fact can cost multiples of that.
If you would like assistance with the registration of a trademark and clearance search, get in touch with our team by clicking the button below.
What are the benefits of professional help?
In addition to revealing whether there are any pre-existing trademarks which may be obstructive to your registration of your brand, the clearance search will also analyse whether your trademark application is at risk of being refused due to the absolute grounds for refusal – for reasons such as that it is descriptive or lacks distinctive character.
Another benefit of conducting a full clearance search is that it provides a useful overview of your competition within the market and can therefore inform future commercial decision-making, whether in relation to intellectual property or otherwise.
As such a professional clearance search provides you with the opportunity to both increase the commercial value of the brand once registered, and also avoid risks inherent to applying for a trademark "blindfolded".
Summary
Instructing specialists to conduct a clearance search is a worthy investment which effectively removes a large degree of anxiety and stress from the trademark application process. Whilst they are not a necessity, filing an application effectively blind without one is a high-risk strategy – particularly in circumstances where many large companies actively monitor and defend their rights.
Click the button below to contact our team to find out more about how the team can assist you with trademark clearance, searching and registration.
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ABOUT VIRTUOSO LEGAL?
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. 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. If you are experiencing an issue and need advice, we strongly encourage you to contact a solicitor to identify your best course of action.
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