Brands Bulletin - November 2011

Tuesday 1st November 2011

 

Trade Mark Clearance Searches - are they worth the money?

Over the years many clients and potential clients have asked us whether it is worth them spending money on carrying out trade mark clearance searches.  The simplistic answer is to say "Yes, of course".  But is that true in all circumstances?  

For example, if a client has been using a mark in trade throughout the UK for many years on a widespread basis, without any problems, then they can be fairly confident that if they file a UK trade mark application for the goods or services for which they have used their mark then they should not face any third party objections.

Equally, if a client has already started producing and selling its products or services under a new brand name then it may feel that it is now too late to carry out trade mark clearance searches.  It may decide just to sit back and see whether or not any third party objections follow from the client's use of its new brand name (although it may still be better to know how likely that will be, by carrying out trade mark clearance searches).

Further, if a client isn’t planning to use a trade mark in trade for a few years, then it may feel that it might as well file a trade mark application and just see what happens.  We call this the "file and be damned" approach to trade mark clearance.

In addition, trade mark clearance searches have their limitations.  There can be errors and omissions in the search results. There can be delays in the uploading of data at the relevant trade mark office (such that very recently filed trade mark applications have not yet been recorded on the relevant trade mark register that is examined for the purpose of producing the search results). The search results often don't cover unregistered trade marks (which are protected in this country via the tort of "passing off").  Also, when a trade mark application is filed overseas (e.g. in the USA) the proprietor of the application has a six month priority period in which he can apply to register the same trade mark for the same goods/services in other countries of the world (e.g. the UK).  If he does, the subsequent application will have the same filing date as the earlier overseas application (i.e. in this example, the UK application would have the same filing date as the USA application).  Thus, it is possible that a proprietor of an overseas trade mark application might, within six months, file a UK trade mark application for that same mark (which would not be revealed by the search results), which could then be relied on to prevent a client from using and registering its mark in the UK.

That said, in the majority of cases it will be in a client's best interests to carry out clearance searches.  If you do not carry out searches then you run the risk of choosing and using a trade mark (and applying to register that trade mark) that someone else has an earlier right to prevent you using/registering.  Businesses often put a great deal of time and money into their promotion and marketing plans before they realise that there is another business with an identical or similar trade mark that can prevent them from using their trade mark.  Conducting clearance searches at the outset can help to reduce the risk of this happening. If you start and then have to cease using a trade mark, the cost of rebranding and changing all the promotional materials that you have produced could be substantial.  Also, it could result in a major loss of customer goodwill and provide your competitors with an advantage.  This is on top of any damages and legal costs that you might end up having to pay to the person who owns the earlier right. Further, no business wants to incur the cost of filing trade mark applications that they subsequently have to abandon. They may discover (after filing the application) that someone else has an earlier trade mark right, which they can rely on to prevent the registration of that mark. Pre-filing searches are never 100% conclusive, but they do go a long way towards trying to avoid such wasted costs. 

If you wish to discuss this email, or any other brand or trade mark issue, please contact Carl Steele, Head of Trade Marks, or feel free to contact any of Ashfords' IP Partners.   

Ashfords LLP is Authorised and Regulated by the Solicitors Regulation Authority. The information in this note is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances. Links to other sites and resources provided by third parties are included for your information only.  We have no control over the content and accept no responsibility for them.