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Why a pre-use /pre-application clearance search is vital

By Sarah Chatterley.

Thinking of using a new trade mark? Tread carefully!

Before you start to use a new brand or trade mark or file an application to register a trade mark, you should check whether anyone else has already adopted it and if so, for what.  Many people think that paying for a trade mark search prior to putting a trade mark onto the market for the first time, or prior to filing an application to register the trade mark, is an expensive luxury. This is not the case. It can save you money in the long run.

 

The importance of pre-use and pre-filing searches

Before you start to use a new brand, trade mark or company name or file an application to register it you should be certain that no-one else has beaten you to it because...

1     Freedom to USE

If your product or service can be confused with a mark or company name already in use you will possibly gain less custom as a result. In addition, once the owner of the earlier trade mark or company name finds out about your business he may complain, especially if you are using the same or a similar trade mark for the same or similar goods and/or services and he considers that you are taking his custom or damaging his business in some way. The end result could be you having to pay court costs, damages and rebranding your business. Think how much it would cost you in time, effort and money to investigate and adopt an alternative brand name and change your stationery, advertising and possibly your company name AFTER you have launched your offering under the original mark. How confused will your customers and prospects be as a result?

2     Freedom to REGISTER

Linked in with 1 above – if a trade mark application has already been filed for the same or a similar trade mark for the same or similar goods and services, in the same territory, then it will be difficult (or impossible) and more expensive to get your own registration. In some cases the owners of well known marks may object to your use and registration of the same or a similar mark even if it is not being used for goods or services provided by them.

Some trade mark offices even contact the owners of existing rights to tell them about new applications so that the existing rights holder has the opportunity to object to the registration of the similar mark. This obviously alerts these right holders to what you are doing. Company names or unregistered use of a trade mark may also be used by a third party as a basis for objecting to the acceptance of any application you file.

Negotiations may avoid formal proceedings but if you are not successful in negotiating a co-existence agreement with the prior trade mark owner, or if you lose the opposition proceedings, then you may face the same costs as 1 above, plus the cost of filing an unsuccessful application, defending an opposition and conducting unfruitful negotiations and you will have nothing to show for any of this.

Many people think that paying for a trade mark search prior to putting a trade mark onto the market for the first time, or prior to filing an application to register the trade mark, is an expensive luxury. This is not the case. It can save you money in the long run.

In a recent trade mark infringement case, the Judge pointed out that the defendant did not do their homework before starting to market goods under a trade mark which was similar to one already being used. He said they were guilty of not doing enough background checking to ensure that they did not encroach into someoneelse’s existing market.

When using the defence of not knowing about the existence of something, you must show that checks had actually been attempted to prevent any conflicts.

As you can see, it may be a false economy to think that you are saving money by not having a search done before you use your mark. It is possible to briefly search yourself, but employing a trade mark attorney is a smart move. A trade mark attorney has the experience to look at existing trade marks and know whether they might be problematic.

As well as looking at the relevant Trade Mark Registers with an experienced eye, we will look at other relevant databases to investigate whether someone is already using the same or a similar mark and whether this is likely to cause you problems. Our experience of prosecuting and defending trade marks means we have the expertise to judge whether marks might be considered to be similar (and how to look for them in the first place). A client may often suggest changes to a mark to make it different from another, but we are able to tell whether these are going to be sufficient.

Please contact us on 01788 547389 if you would like more details on what searches actually cover or cost. We would be happy to talk this through with you.

This news item may contain information of general interest about current legal issues, but does not contain legal advice.