Checking a trademark before registering

[smeets]

Hi All,
I'm starting a new business and want to check our potential name for any conflicts with other trademarks - where do I start? I have contacted a solicitor who has suggested he can do a clearance search (?) for us for around £200, I think that's the bit before filing to ensure that there are no potential conflicts that could come up during the actual trade mark application process. That nest stage will likly cost around £500 to ask them to undertake the application process for us.

Is there anything we can do to conduct the clearance check ourselves and help avoid this cost? Our name is going to be made up as follows <Word e.g. Article>space<Number in figures e.g. 99> which would read Article 99. I've done some searches on the IPO Trade Mark search but it comes up with so many results - does this mean I should avoid this name altogether? Or only avoid it if an exact search result for Article 99 whic is also in the same class as ours?

I'm not quite sure what I should be searching for? The IPO Trade Mark search offers 'Search for marks with ALL these words' as well as 'Search for marks with ANY of these words' - should I be looking out for one over the other?

Grateful for any advice anyone may have on any of the above, particularly if you could shed some light on how best to undertake the clearance search (or part of it) ourselves to avoid incurring unnecessary costs of solicitors fees.

Thank you.

 

[F_B]

Firstly, you are doing the right thing by trying to assess if the mark is free to use and free to register (note these are different things). Clearance searches are normally offered in order to identify any risks associated with the use of the mark (i.e. will you infringe someone else's rights) and whether you can register it (there are conditions that need to be met).

To understand whether you are free to use a mark you first need to understand how you infringe other people's rights. There are two to consider:
1. Registered trademark infringement.
Use of a mark that is similar (ask what are the similarities, visually, conceptually, and/or phonetically) for goods that are similar (e.g. same NICE class) to a registered trademark where there is a risk of confusion by the public may be an infringement.

Note that trademarks are registered by jurisdiction, if your market is in the UK you need to look out for UK trademarks, European Union trademarks (name changed from Community trademark yesterday), and International trademark registrations.

To identify these I'd recommend using the TMView database here: https://www.tmdn.org/tmview/welcome

2. Passing off
Use of a mark, in which there is reputation and goodwill, and that use is a misrepresentation, that causes damage to the good will is called passing off. This applies to marks which are not registered trademarks.

To identify if there are any unregistered similar marks you can do a general internet search.

If you choose to do the search yourself be strict. Don't convince yourself that small differences are enough (e.g. you find a registration for Article98 (no space) for similar goods (headgear, when you intend to sell clothing)-I'd class this as an infringement risk).

Likewise if you find a trademark registered for the word Article 99 don't think that by adding a figurative element will put you in the clear. Use of the words Article 99 in any form would be an infringement of the aforementioned example trademark.

£200 for a trademark search is suspiciously cheap to me. Is your solicitor a registered trademark attorney? I would recommend using someone who is regulated by IPReg.

Alternatively, consider a "right start" UKIPO application. Here you pay half the offical filing fee, the UKIPO will provide an initial opinion (i.e. they will do a search of the registered rights). You can then abandon the application at that point if the opinion is unfavourable, or pay the rest of the fee and progress it.

Note the UKIPO do not perform a search for unregistered rights so you will still need to do the general internet search.

Finally, you can get free advice from an IPReg patent or trademark attorney by attending a free IPClinic. Please see the below link for the libraries offering this service. You could take any search results which are of a concern to one of these clinics and ask for an opinion:
http://www.cipa.org.uk/need-advice/ip-clinics/

 

[Gecko001]

Doing the search yourself could be useful, but remember that just a search of the internet will probably not be enough. I would hazard a guess that the majority of marks, whether registered trade marks or not, cannot be found on the internet. I have dabbled in logo design a little and have sold a few and quite often the logos are for businesses which do not have an internet presence or apparently wanting to have an internet presence judging by searches I have done on the internet some time after to doing the logo for the business.