What should I do before adopting a trade mark?

What should I do before adopting a trade mark?

It is advisable to have clearance searches carried out before you commit resources to adopting a new trade mark or extending the use of an existing trade mark to new types of business or new territories. Searching enables you (1) to assess whether it is possible to use a trade mark in a particular territory without infringing the trade mark rights (or possibly related rights) of others and (2) to assess whether you can register your trade mark in that territory.

Searching is important because any trader that adopts a sign which infringes the rights of others can face expensive and embarrassing consequences, regardless of whether or not their infringement is inadvertent. For example, a trader who uses a sign in the UK which infringes a UK trade mark registration might be forced to cancel his marketing campaign, withdraw products, services or promotional material bearing the sign from the UK marketplace and to re-brand. He might also have to pay damages or could face other remedies.

Most trade mark registers are open to public inspection and there are some good internet databases (e.g. TMView). We can provide analysed trade mark searches for the UK and most territories throughout the world. In our search reports, we provide expert analysis as to whether any earlier trade mark applications or registrations revealed by a search present obstacles to the use and registration of a trade mark in a particular territory. In addition to searches of trade mark registers, we also provide a range of other searches such as UK common law searches, domain name searches, company name searches, in-use searches and pharmaceutical in-use searches.

If you are interested in using your trade mark in a range of countries, or are considering a number of marks, then we can devise an appropriate searching strategy which takes into account relevant factors such as your key markets, your budget and the time available for searching.

If searches indicate that your trade mark is available for use and registration, then it is advisable to apply to register the trade mark in relevant territories in order to prevent others from subsequently using and registering conflicting marks.

It is also advisable to put in place appropriate trade mark watches. This is to ensure that you are notified of any later conflicting trade mark applications or registrations in relevant territories and to ensure that you have the opportunity to object to any such applications or registrations. In addition, we can put in place watches for conflicting domain names or company names as well as watches specific to particular competitors.

Related articles