Clearance searches are the most vital part of trade mark registration
Understanding what it takes to clear a trade mark before registration is the key to a brilliant brand.
Photo by Marten Newhall on Unsplash
Words by Hallam Whitehead
Want to be sure that the brand you're looking to secure will be successfully registered as a trade mark, and that it will function as a strong basis for your business' identity?
Contact our team to discuss how we can help you with a professional clearance search; and secure your brand today.
Introduction
When registering a trade mark (or "trademark" as it is spelt in the US), 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 trade mark opposition or infringement claim. In such cases, your ability to use the brand may be limited or 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 trade mark clearance search is a vital step to undertake in advance of filing a trade mark application which is hugely beneficial in providing the applicant with peace of mind and a degree of security when they come to file a trade mark application.
This guide explains:
- Why it is important to conduct a clearance search.
- How and where you can look at trade marks yourself.
- What issues can arise.
- What a professional search offers, and more.
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Do you want to search for a trade mark 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 trade mark?
Clearance searches, done correctly, remove a substantial element of risk from the trade mark 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 a notice of opposition to their application, we find that they have not conducted a clearance search before 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 trade mark myself?
Anyone looking to conduct their own preliminary trade mark searches can use the online database facilities available on both the UKIPO, EUIPO and WIPO websites, where you are able to search by trade mark 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 trade marks using these databases will provide details of the filing date, classification, specification, and trade mark 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 trade mark application.
The next section explains why this is the case, and why it is recommended to seek professional help when it comes to trade mark 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 trade marks have been registered, the tools available online do not allow you to comprehensively search for trade marks that are similar to yours.
Therefore, their usefulness in terms of informing you whether a trade mark is registerable is limited.
These tools are best utilised by searching for:
- Details of a specific trade mark.
- To see all of the trade marks registered by any particular party.
- To see whether any trade marks have yet been registered for a particular brand.
- The classifications (and specification) that these trade marks are registered for.
In order to comprehensively assess whether a prospective trade mark is likely to successfully pass through to registration, or whether that application is likely to be opposed, instructing intellectual property specialists to conduct a trade mark clearance search is a must.
What is a professional trade mark clearance search?
A trade mark clearance search is a thorough search of the relevant trade mark registers against a chosen brand which provides the searcher with a full overview of any similar or conflicting trade marks which are already registered in the jurisdiction.
We strongly recommend that all clients conduct a professional clearance search in advance of filing a trade mark application.
The primary purpose is to uncover existing registered trade marks which may be confusingly similar to your chosen brand and which may subsequently form the basis of an opposition against your application.
Trade mark search specialists such as Virtuoso Legal provide brand owners with detailed due diligence around their proposed trade marks.
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 trade mark 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 trade marks which may be obstructive to the registration of your brand, the clearance search will also analyse whether your trade mark 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 trade mark "blindfolded".
A professional clearance search can also help in the registration of the brand, by tailoring the trade mark registration
Summary
Instructing specialists to conduct a clearance search is a worthy investment which effectively removes a large degree of anxiety and stress from the trade mark 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 trade mark 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.
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The content on this website, including FAQs and legal posts, is for general informational purposes only and does not constitute legal advice. Laws vary by jurisdiction, and specific advice should always be sought for individual circumstances. Virtuoso Legal is not responsible for any losses arising from reliance on this content. For tailored advice, please contact us at 0113 237 9900 or enquiries@virtuosolegal.com.
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