Table of Contents
In Short
- Conduct a thorough trade mark search before investing in a new brand name or logo to avoid legal disputes.
- Look beyond exact matches, similar-sounding names or different spellings can still cause conflicts.
- Check both registered and unregistered trade marks, including online platforms, to identify potential risks.
Tips for Businesses
Before committing to a new brand name, search the UK trade mark register and online platforms for similar names and variations. Be cautious of brands in related industries, even if the spelling differs. If in doubt, seek legal advice to avoid costly disputes or the need for rebranding.
Before investing time and money in a new brand name or logo, conducting a thorough trade mark search is one of the most crucial steps any UK business can take to protect its intellectual property and avoid costly legal disputes. Using a brand name identical or similar to an existing registered trade mark could unknowingly be committing trade mark infringement.
To secure your brand and protect your business, consider filing trade mark applications for your business or trading name and any logos you use before investing heavily in that brand. As part of this due diligence, we recommend searching the trade marks register before filing your application. This article explores the purpose and method of conducting trade mark searches in the UK.
Why Conduct a Trade Mark Search?
Awareness of what trade marks are registered that may be similar to yours helps you make informed business decisions. A thorough search helps answer crucial questions such as:
- How likely is it that your trade mark application will be accepted and reach registration?
- Are you on course to become involved in trade mark infringement proceedings?
- Are similar marks already being used in your industry that may confuse consumers or split the market?
Knowing the answers to these questions before filing your trade mark application will allow you to make informed decisions about the business. It will also help you decide where to invest your resources and prepare for potential obstacles.
Types of Trade Mark Searches
In the UK, there are two main types of searches that you could conduct.
Search of the UK Trade Marks Register
Searching the UK trade marks register for identical and similar marks to your own will reveal trade marks that have been registered or applied for in the UK. This search will not reveal any trade marks that have not been registered or are registered only outside the UK.
However, this search will help you identify high-risk existing trade mark registrations/applications that cover similar goods and/or services to you. In the UK, another trade mark can still pose an obstacle to you even if there are differences between your trade mark and theirs if they are confusingly similar.
Common Law Searches
A marketplace search can provide additional peace of mind. It can do so by revealing businesses using similar or identical trade marks without official registration. While unregistered trade marks are generally harder to enforce, firms with a substantial reputation can still threaten your brand.
Though it is impossible to search the entire marketplace, you could focus your search on key areas:
- Companies House Register: Although a business may use a different name for their legal entity to the name that they use for the purposes of trading, many companies will align the two;
- Social Media Platforms: Many businesses rely on social media to advertise their business, so having an idea about the size of their following and outreach would also help you assess how big of a risk the other business may pose;
- Domain Name Registries: If a domain name that incorporates the business name that you were considering has already been taken, this may indicate that another business is using that name and building a reputation; and
- Google and other search engines.
How Do I Do These Searches?
Although the UK has a practical and user-friendly online search tool, some common pitfalls exist. You should seek legal advice if you are uncertain how best to conduct your searches.
Firstly, the UK has a broad approach to determining whether two marks are similar. For example, while visually distinct, “4” and “four” would likely be considered similar because they are identical conceptually and phonetically.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
The goods and services covered in your trade mark applications/registrations are also important when deciding on similarity. If two marks are only similar, but the applications cover identical goods and/or services, this will render the two marks legally similar. Even if the goods and services listed are not identical, if they too are similar, and there is a likelihood that a consumer may be confused between the two marks, then this will also render the marks legally similar.
Example
For these reasons, you should search for your trade mark, spelling variations, and conceptually similar marks. Bear in mind that “similar goods and services” will include other classes than you include on your application.
Key Takeaways
A thorough trade mark search protects your business investment. Checking both registered and unregistered marks helps avoid future conflicts and ensures your brand is legally secure. Do not rely solely on exact matches – similar-sounding names, related business areas, and alternative spellings can all create legal obstacles to your trade mark registration.
If you need help with trade marks, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.
Frequently Asked Questions
Typically, a professional search of the UK trade mark register takes around a week. This includes professional advice on the level of risk involved.
In short, you have three options: rebrand, proceed with risk, or negotiate with the existing owner.
If you have invested little in that trade mark, you may wish to start fresh and rebrand to something less contentious. Alternatively, you can take the risk and apply for the trade mark, too, and see how the other owner reacts. You could also consider initiating contact with that owner before applying to see if you can come to an agreement.
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