What should I do before adopting a trade mark?

What should I do before adopting a trade mark?


Starting a new business, broadening a product range, or expanding into new territories can be an exciting time, and typically involves market research, competitor checks, company name checks, maybe even designing a new logo for the new venture. However it’s easy to forget to check that no one has got to the trade mark first.

Trade Mark Clearance Searches

With this in mind, marketing and branding teams should factor in trade mark clearance searches at an early stage of the brand development process, ideally at the shortlist phase, and certainly before significant time and money are expended in launching the new product. Clearance searches will help you assess whether the proposed mark is available for use, and potentially registration, in the places you want to use it, and in relation to the products or services you want to sell.

A trader who uses a sign that is too similar to an existing right risks infringing that earlier right, where the earlier right is a registered trade mark, and can face expensive, disruptive and embarrassing consequences, even if the infringement is inadvertent. Where an earlier sign is unregistered but has demonstrable UK goodwill, the rights owner may be able to take action for passing off. By way of example, a trader using an infringing sign in the UK may be forced to cancel their marketing campaign, withdraw all promotional materials and products bearing the sign, cease providing services under the sign, and re-brand. They may also have to pay damages or face other financial consequences.

Many national and regional trade mark registers are open to public inspection, and there are a number of internet search tools that facilitate their interrogation, enabling simultaneous access to multiple registers. That said, and while it is generally a straightforward matter to check if an identical trade mark is on the register, complications can arise where a mark is somewhat similar, or where it hasn’t been registered for exactly the same products or services: without relevant specialist knowledge, assessing the potential risk represented by an existing trade mark can be difficult.

We offer a range of clearance and availability searches. At the quick and easy end, we can check for identical or substantially identical trade marks on a particular register, and provide comments on the relevance or otherwise of goods or services covered by those marks. At the other end, our full availability reports provide expert detailed analysis of whether any existing trade mark applications or registrations are likely to block the use or registration of the proposed trade mark, with an assessment of both the legal and commercial risks, if any, of continuing with the proposed trade mark. Where risks are identified, we will assess possible mitigating factors, the available options, and provide our recommendations as to best next steps.

We can conduct or organise identical or full availability searches for you in any territory of interest, as well as UK common law searches for trade marks that may not be protected by registration, domain name searches, company name searches, plus in-use (including pharmaceutical in-use) searches.

Expanding Use of a Trade Mark

If your business is expanding into new territories and you want to take an existing trade mark with it, or you are embarking on a brand development or extension project, we will be happy to put together our recommendations for an appropriate search strategy, taking into consideration relevant factors such as key markets, budget, and the relevant timeframe.

Once searches are complete, and where the results indicate that the mark of interest is available for both use and registration, we recommend getting applications for registration on file without delay in order to prevent others from getting there first. While many jurisdictions recognise unregistered trade marks, including the UK, enforcing such rights usually needs to be done in Court. In the UK, a claim to passing off requires the rights owner to demonstrate goodwill, a misrepresentation by the other party, and likely or actual damage, making it both difficult and expensive to succeed. By contrast, enforcing a registered trade mark is significantly easier and cheaper. A bit like an insurance policy, a registered trade mark can become invaluable once you need to rely upon it.

Do Check Ownership

One further word of warning. If you intend to or have used a third party, such as a design agency, to design important elements of your branding, do check that you obtain an assignment of copyright and other relevant IP rights in any graphical elements which have been created for you. Absent agreement to the contrary, copyright resides with the initial creator. Check the terms of business of your designers and if they do not make it clear that they will transfer right to you then you should raise the issue, ideally before committing to the design project in the first place.

Trade Mark Watching

As well as clearance searches, we recommend ongoing monitoring of trade marks. Setting up a trade mark watch means you will be notified of any applications for relevant trade mark applications in the territories of interest. Becoming aware of conflicting marks while they are still pending applications gives you the opportunity to oppose the application, which is generally easier than challenging a granted registration. As well as trade marks, we can monitor domain names and company names, while company-specific monitoring can help keep tabs on what your competitors are doing.

If you are interested in using your trade mark in a range of countries, or are considering a number of marks, then our experienced trade mark attorneys are able to devise an appropriate searching or monitoring strategy which takes into account relevant factors such as key markets and budget. Please contact us for more information.

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