UK: Trade Mark Conflict Searches: Why, How And When?

Last Updated: 19 September 2011
Article by Suzy Schmitz and MontaguLaw, P.C.

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Introduction

Consider the following scenario: your company has just launched its next big product; you worked with an outside marketing company and chose the perfect name for the product; a domain name was registered, substantial funds were devoted to developing the look and feel of the product and thousands of pounds were spent on advertising featuring the new name. Then, just one week after the product launch, you receive a letter informing you that the new product name is infringing on the trade mark rights of another company, and demanding that you immediately cease using the name and pay substantial damages. How could this have happened, you are asked?

Unfortunately, the above scenario is all too common, and is one that could easily have been avoided by taking a few precautions before settling on the new product name. To avoid finding yourself in this position, it is always advisable to perform trade mark searches before adopting and using a new name. Trade mark searches allow companies to gain insight into the potential risk associated with a proposed mark. By doing these searches before committing to a name, you can reduce the inconvenience of rebranding later and also, crucially, minimise the risk of infringing other peoples' rights.

Types of searches

There are generally two levels of searching that are available—screening searches and full clearance searches. Although in some cases a screening search may suffice, especially if it quickly becomes apparent the proposed name is a bad idea, generally it is best to carry out the most thorough search you can afford.

Screening Searches

Screening searches are available in a number of jurisdictions. They are performed through an online database that immediately provides a list of relevant marks in response to specific search queries. Usually the screening search is used as a tool to "knock out" a proposed mark where a directly conflicting mark already exists. The benefits of a screening search include a relatively low cost and quick turnaround, as compared to a more in-depth full search. If a screening search is not available in a desired jurisdiction, or if a screening search was performed and did not reveal any conflicts, then a more in-depth "full search" may be performed. In practice, a screening search may be followed by a full clearance search especially where the results are inconclusive.

Full Clearance Search

The full clearance search will provide a much more comprehensive review, not only of existing registrations and pending applications but of common law uses as well. A full search is especially important in "common law" jurisdictions such as the United States, United Kingdom and Australia, where trade mark rights may be acquired through use (although note that in the UK a 'full search' will not always extend to common law uses, so you should double check to ensure these will be covered). In these jurisdictions, a search of the trade mark registry will not be sufficient because a third party can claim prior rights in a mark based on its use of that mark in commerce, even if it has not filed an application with the Trade Mark Office. The full clearance search report in these jurisdictions will contain a section on common law uses, which will bring any such conflicts to the attention of the lawyer reviewing the report.

It must be noted, however, that even a full clearance search can never be guaranteed to uncover every potential obstacle that may exist. For example, an arguably similar mark may not have been included in the search results because the associated goods appeared to be in an entirely different field than those associated with the proposed mark, but the owner of this mark could turn out to be very protective of its rights and raise an objection anyway. Similarly, searching for common laws rights can never be 100% accurate. However, a full clearance search remains the best method available to reveal potential risks.

Strategy Considerations

As a general rule, trade mark searches should be performed before adopting and using a new mark. Various strategic factors will determine the breadth of searching that is required in a particular situation. Some key things to think about are:

Where?

Trade mark rights are territorial, which means that if a company possesses trade mark rights in one jurisdiction, those rights will generally not be recognized in another jurisdiction. This also means that even if a mark is clear for use in one jurisdiction, it may not be clear in another jurisdiction. Therefore, searches should be performed in every jurisdiction where the product in question will be sold (or where it will likely be sold in the future).

In the case of a company that plans to adopt and use a new mark in the European Union, ideally searches should be performed of the registry of Community Trade Mark ("CTM") and registries in the individual jurisdictions that comprise the European Union (the CTM covers the European Union as a whole). In practice, because of the large number of jurisdictions at issue and the costs associated with searching each jurisdiction, unless the mark in question is a housemark or is associated with a major product offering, many companies elect to bypass full searches of each individual EU member state, and instead rely on the results of the screening searches. Likewise, ideally, the company would also search for marks applied for via the Madrid System, which is a second multi-jurisdiction filing system. Marks filed under this system are referred to as 'International Registrations' and may cover up to 85 jurisdictions, including the CTM and individual member states of the EU.

What?

It may sound obvious, but it is important to think about which marks you should be searching for. This is particularly the case where a company's proposed mark includes an ordinary word combined with a distinctive word. An example would be AMAZON.COM; when searching for conflicting marks it would be acceptable to search for just AMAZON as the addition of .COM would not materially improve the search, and may erroneously lead to the search overlooking relevant conflicting marks.

Conclusion

It may be useful to think of trade mark searching as a type of insurance policy—it is preferable to spend a relatively small amount of money up front to avoid a major and potentially costly disaster in the future. After all, the cost of a change in product name prior to launch is miniscule compared to a rebrand post-launch and liability for damages and costs should you infringe the rights of a third party. Moreover, because of the stakes at hand, it is imperative that companies receive sound advice in connection with all facets of the trade mark search process, including the formulation of a robust search strategy. The earlier this advice is received the better.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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