Trade Mark And Design Searches

Introduction

Whenever a new launch is proposed, whether it is for a product, brand, business name

or an advertising campaign, there is always a risk that someone else is already using an

identical or a similar name or design. If so, then that party may be entitled to obtain an

immediate injunction from the court to prevent the launch and obtain damages for trade mark,

design right or copyright infringement and/or passing off.

It is for this reason that most well advised businesses will undertake a comprehensive

search programme prior to adopting a new name or design in order to minimise exposure to

such risks. The financial consequences of a failed launch, together with the attendant PR

damage and loss of management time, should not be underestimated.

Searching is an area that requires considerable skill and experience to ensure that

appropriate searches are conducted and at the required level of complexity. Because

searching can be an expensive and sometimes uncertain business, the aim of this guide is to

illustrate the variety of searches that are available together with their benefits and

limitations.

What Variables Should Be Considered?

Mark: The first variable is the mark itself. Is the search intended to locate a

specific registration only, or is to look for any marks that might be regarded as similar or

having a phonetic variation?

Classes: All goods and services are subdivided for trade mark purposes into 45

"Classes". Should the search focus only on identical goods and services in the

same Class of interest, or should the search extend to similar goods and services in

different Classes? This is of particular importance where a Class has been changed; for

example "Restaurant services", formerly Class 42 and now Class 43.

Territory: In which countries is the mark to be used in? Trade marks and design rights

are territorial in nature and each country has its own register. Our UK searches will as a

matter of course cover the European Community and International Registers insofar as these

apply to the UK. It is often overlooked that many UK companies also sell products in

Ireland.

Costs: The level of complexity of the search needs to be considered as this will impact

on fees and disbursements. Broadly speaking, screening and identical searches are the

cheapest and the fastest as they can both be conducted on-line. Full availability searches

are the most expensive and have a standard 5 day turnaround.

What Types Of Searches Are...