Briefings > What to do before adopting a trade mark (clearance search)

Clearance searches

Before proceeding with trade mark filing, or first use, it is advisable to arrange for a trade mark clearance search on the appropriate Trade Mark Register(s). This will help establish whether the mark is free for use. A common misapprehension is that if a mark has not already been registered in an identical form then all is well. No! The reality is that someone’s statutory monopoly (which is what a registration is) will be infringed by unauthorised use of the same or similar trade mark in respect of the same or similar goods or services. Where the line is to be drawn for ‘similarity’ is where professional help is needed. Money spent on a professional clearance search is money well spent to prevent much larger financial wastages further down stream!

Searching is important because if there is infringement this can be costly and embarrassing. All the money invested in design, marketing and advertising, for example, might be completely wasted, and products might have to be withdrawn, not to mention having to pay costs or even damages if the matter were to proceed to court!

Branding is always a bit risky because of a variety of possible unknowns. The fact that a design agency, to take an example, has come up with an attractive and appealing new image for your company or products does not automatically give you the right to use that new look, the fruit of what may well be original work done in good faith. You may still be infringing someone else’s rights.

At the very least it is prudent to search trade mark registers which are open to public inspection in those territories where you wish to operate under the new mark. In our search reports we provide expert analysis on whether there are earlier trade mark applications or registrations that will provide obstacles to both use and registration in that territory. An identical name search is the bare minimum type of search and will quickly tell you whether it is worth going forward or not. A search that looks for similarities - visual, phonetic or even conceptual - is the recommended standard search. We do this for words as well as for designs/logos (for the latter different charges apply depending on the precise character of the design).

If your mark is intended to be used in several countries or you have a number of marks, we can devise an appropriate searching strategy which takes into account your particular business circumstances, including the markets you are targeting, time to market and your budget.

If the searches indicate that the mark is available to use and to be registered, it is advisable that this mark be filed for registration before anyone else gets in first. Not only can you then stop others using this same or closely similar mark, but in the UK, for example, a registration is a first line of defence against subsequently being sued by a third party for infringement of their earlier mark.

Once registered, it is advisable to keep an eye out for future conflicting marks by means of a trade mark watch service. It is also worth keeping a look out for conflicting domain names and company names, and then we can advise you what to do.

If you would like a clearance search done for you, please contact us at Cam Trade Marks and we will discuss with you the various options.

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