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A Short Guide to
Searching a New Trade Mark in the UK
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| In the UK, use
of a trade mark can be stopped if there is either |
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Use of the same or similar mark for the same or similar
goods or services, (regardless of whether that mark
is registered) on the basis of what is called the
common law of passing off, or
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The same or similar mark is
registered for the same or similar goods or services.
It does not matter if the registered trade mark is currently
in use - it can stay out of use for up to five years
and still stay on the register |
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Your use can infringe
or amount to passing off even if you have
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- no intention
to cause confusion; it is whether confusion is likely
regardless of intention to cause it that matters. |
| - not actually
"copied"- copying is not relevant to trade
mark infringement or passing off. |
| - or you think
you are using a word only as a description. |
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Why should searches be done?
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| To save you money.
If searches are done before you put the mark on advertising,
packaging and promotional literature, or shop fixtures
or a website, and the searches reveal a problem, you
will have the option of switching to another mark before
you incur this expense. |
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The steps to
follow when clearing a new mark
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| The steps to follow
when clearing a new mark for use in the UK are below.
Clients can do the first three steps themselves, and
need only contact a trade mark attorney at step four |
| Check your own
sources of competitor intelligence: If the mark (or
something similar to it) is already in use in the UK,
by a direct competitor, there is no point in going on
with your mark, as they will surely object and will
have grounds to do so, even if not registered. |
| Put the mark in
a internet search engine, and check the relevant domain
name registers and see if this picks up use by any other
company, competitor or not. If you think what you have
found could give you a problem, send us details. |
| Put the name in
the online search at Companies House: If there is a
company with the same name as your proposed mark, and
if it is already trading under that name in the same
or related industry sector as you, then this company
could give you a passing off problem. |
| Then have a search
of the registers of trade marks in the UK (there is
more than one) done. Note that even if the identical
mark is not registered, it will be necessary to advance
the search to find similar marks. The on line search
at the Patent Office will not be enough for this, and
the off line search provided by the Patent Office search
and advisory service for £80 is not that much
more extensive than its own on line search. On average,
a fully extensive search costs about £100, and
the time taken to have a trade mark attorney analyse
it usually costs another £100-150. |
| If the trade mark
registers search reveals marks which your use is likely
to infringe, there may well be options for overcoming
them. One thing clients usually ask in this situation
is: could we ask the company concerned if they have
a problem with what we are proposing to do and give
their consent? The answer is well, yes, you can ask,
but this invites them to say no. And it brings you to
their attention, which had it not been for your approach,
might not otherwise have been the case. The better course
of action is to have enquires made into the company,
discreetly, to determine their level of interest in
the mark and then assess if an approach is likely to
result in obtaining consent. If not, then other options
are to purchase the mark, or if it has been on the register
for more than five years and out of use for all of that
time, to indicate to the company concerned that you
are willing to apply to the Patent Office to revoke
it for non-use. This can usually, if the company accepts
that there has been no use, result in the company voluntarily
taking the mark off the register, thus saving the time
and expense of a formal challenge. Typically, the costs
of this step are round about £500. |
| Once any obstacles
have been cleared out of the way, apply for registration
of your mark. Until you do, it leaves the way open for
someone else to apply for registration of the same or
similar mark, and if they obtain registration, you will
then infringe, even if your use began before their date
of registration. (True there is a defence to infringement
for anterior use. But this applies only if that use
is a) in a "particular locality" b) so extensive
that a passing action could be brought against the owner
of the trade mark registration and c) the owner of the
trade mark registration has no earlier use himself.
Even if you have this amount of use, it will be expensive
to prove it, as the forum for infringement actions is
always the High Court. The cost of obtaining trade mark
registration is a minimum official fee of £200
(with no further fees to pay until the first renewal
is due 10 years later). The time taken to prepare the
application for registration and to deal with correspondence
with the Registry can be a minimum of £200. |
| Lastly, once you
have obtained registration of your mark, you need to
watch out for anyone else attempting to register it.
If they succeed, then your ability to bring an action
for infringement against them will be compromised. This
is because they will then have what is called a Section
11(1) defence, that use of one registered mark does
not infringe another registered mark. The Patent Office
should object on your behalf, but quite often they do
not. This is why the Patent Office, after it has accepted
an application, publishes it in its own Trade Mark Journal,
so that owners of other marks have an opportunity to
object. The annual cost of having a watch made of the
Trade Marks Journal, and reporting to you if we see
a problem, is a minimum of £30 per year. |
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| Note: you
can be stopped from using a mark even if it is registered
for goods and service which are entirely different from
yours. But your use must be taking unfair advantage
of the registered mark or be detrimental to its character.
This type of infringement is less common; if we think
however that your use might fall into it, we will advise
you. |
| NB all figures
above exclude Vat. |
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